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A BRIEF INQUIRY 



INTO THE 



PSINCIPLES. EFFECT, AND PRESENT STATE 



OF THE 



AMERICAN 

PATENT SYSTEM 



BY 



H. & C. HO^VSON. 

/^'copyright V-, 

TOGETHER WITH THE l"^ M^4/«/» /2 ^^/' 

Laws of the United States Relating to Patents, 
Trade-Marks and Copyrights. 



PHILADELPHIA: 
SHERMAI^ & CO., PRINTERS. 

1872. 



Entered according to Act of Congress, in the year 1871, 

By H. & C. HOWSON, 

In the Office of the Librarian of Congress at Washington, D. C= 












CONTENTS. 



Preface, .......... 

History of property in inventions, ..... 

General principles governing patent property, . 

Patents as a mode of remunerating inventors, . 

Essential features of a good patent system, 

The American patent system. — Previous official examination, 

Ordinary criticisms of the Patent Office considered, 

Actual defects of the Patent Office and the remedy, . 

Benefits of an examining system, 

The examining system as viewed from abroad. 

Remedies for defective patents, . 

Disclaimers — Reissues, 

General features of the TJ. S. Patent Laws, 

Caveats, ..... 

Conditions to patentability, 

Interferences, .... 

Priority of invention, . 

Diligence, .... 

Appeals, ..... 

Remedies for Infringement, 



PAGE 

3 
5 
9 
12 
15 
17 
24 
28 
34 
37 
46 
60 
56 
57 
58 
61 
65 
67 



Laws of the United States relating to patents, trade marks 

and copyrights, ......... 73 

Index to patent laws, ........ 109 



PREFACE. 



The following brief essay on the Patent System of the United States 
contains information which the writers believe has not heretofore been 
collected in a treatise of reasonable compass. To obtain such information 
inventors have been compelled to resort for some items to the Patent 
Laws, for others to the Kules and Regulations of the Patent Office ; while 
others of great importance have been, to all practical intents, locked up 
in elaborate volumes to which none but a professional man could be ex- 
pected to give the requisite time and attention. 

The aim in the following pages has been, in part, to collect and con- 
dense information concerning the general features of the law, illustrating 
it, where necessary, by reference to general principles. 

In doing this it has been pertinent to enter at some length into those 
questions of public justice and policy upon which property in invention 
is founded, and to explain the true position of inventors in relation to the 
jpublic. 

Official examination, previous to the grant of patents, has been 
treated at some length, and necessarily m a controversial way, the en- 
deavor being to meet, in a fair and scrutinizing spirit, the usual objec- 
tions to the system, to point out wherein it may be really deficient, and 
how capable of remedy these deficiencies are. 

We beheve that the question is fairly stated, and candidly considered, 
and we trust that our readers will conclude with us that whatever 
may have been the defects in the examining system, they are suscep- 
tible of remedy, and that all defects admitted, the system may yet be 
regarded as one of the most eflicient of those causes which have given 
patent property, here, a certainty and commercial value, such as it pos- 
sesses in no other patent-granting country. 

It is proper to state that our remarks upon the" main defect, want of 
uniformity, in the examining system, and our suggestions as to the 

(3) 



PREFACE. 



remedy are for the most part based upon observations made by the Hon. 
M. D. Leggett, the present able Commissioner of Patents, who, while 
keenly alive to the defect alluded to, is not in the least doubtful of the 
feasibility of measures by which it may be remedied. 

To the facts and arguments adduced in support of the examining 
system additional point is given, by reference to foreign testimony as to 
the evils arising from the grant of patents without previous examina- 
tion. It was considered pertinent to do this, because, recently, it has 
been hinted in sundry quarters that the abandonment of previous exam- 
inations would be a desirable improvement in our law. That such a 
change would be anything but desirable we think our readers can hardly 
fail to conclude, when they peruse the weighty evidence collected in 
these pages against a haphazard, undiscriminating grant of patents. 

The concluding chapters of the treatise touch upon other leading fea- 
tures in our patent law. Disclaimers, reissues, caveats, interferences, 
suits for infringement, &c., are treated of, necessarily, with great brevity, 
but not too briefly, it is hoped, to convey that rudimentary knowledge of 
the subject which every person interested in patent property should 
acquire. 

Anything like the thoroughness of a legal text-book is, of course, not 
to be expected within so brief a compass, and in fact anything beyond 
generalization has been carefully avoided, the object being simply to 
map out those common principles and incidents which are of everydaj^ 
application in dealing with property in original invention. 

In the book is incorporated the text of the law concerning patents, 
trade-marks, and copyrights ; those sections of the law bearing upon 
questions treated in the body of the book being there referred to by 
number. 

It is hoped that inventors and patentees will find the treatise a ser- 
viceable manual of information touching matters greatly concerning 
their interests. 

H. & C. HOWSOK. 



THE AMERICAN PATENT SYSTEM. 



CHAPTEE I. 

HISTORY OF PROPERTY IN 
INVENTIONS. 

An inquiry as to the principles 
and object of tlie American Patent 
System, may perhaps be made more 
clear if introduced by a brief his- 
torical retrospect. 

The English "Statute of Mo- 
nopolies," James I, 21st, is the 
earliest legislative recognition of the 
public policy of allowing temporary 
exclusive rights in the exercise of meir 
manufactures. This statute declared 
utterly illegal and void, those royal 
grants for the sole buying, selling, 
working or using of different things 
within the realm, which, under the 
name of patents, had become odious 
from their mischievous and oppres- 
sive results. But from the general 
condemnation of monopolies, the 
act excepted, under certain qualifica- 
tions, patents for the sole working 
or making, during a limited period, 
of any manner of new manufac- 
tures, which others, at the time of 
making such letters-patent should not 
use. 

To the Anglo-Saxon mind — jeal- 
ous of anything tending to re- 
strain free action, and jealous, es- 



pecially, of any extraordinary in- 
struments of taxation — monopolies 
in trade or art, or in the making 
or vending of necessary or useful 
articles, were utterly abhorrent. 

But the declaratory character of 
this statute shows that jireviously, 
at common law, it was recognized 
as a lawful prerogative of the Crown 
to grant to the inventors of new 
manufactures the sole right, for lim- 
ited periods, of working such manu- 
factures within the kingdom, and 
records of such grants are to be found, 
dating so far back as the time of Ed- 
ward III. 

As explained by Lord Eldon, this 
was a prerogative vested in the 
Crown as the depositary of the su- 
preme executive power of the state, 
to be exercised in behalf of and for 
the benefit of the public. 

But, as may be well understood, a 
royal prerogative of granting Pat- 
ents of Monopolies, so long as its 
true object remained undefined and 
its exercise unregulated by express 
legislation, was exceedingly likely to 
be diverted from its legitimate uses 
and employed for the private advan- 
tage of the monarch, or of royal favor- 
ites, to the grievous disadvantage of 
the public. And so events proA^ed, for 

(5) 



History of Property in Inventions 



during the reign of Elizabetli especi- 
ally the prerogative was so stretched 
and perverted as to produce general 
mischief and complaint, which finally 
led to the passage of this Statute of 
Monopolies, the effect of which is to 
define the real extent and object of 
the royal prerogative with reference 
to the grant of patents affecting the 
exercise of trades. 

It is not our purpose to pursue 
this historical inquiry further than 
to point out that the common law 
of England early recognized the 
public policy of granting exclusive 
privileges in the exercise of new 
trades, and that th.ep>uhUc advantage 
arising from the introduction or dis- 
covery of a new art or trade was re- 
garded as being that which alone 
warranted such grants. 

The words "true and first in- 
ventor," as used to this day in Eng- 
lish Patent laAV, include not only 
him who may first devise or discover 
something new, but him also who 
may first make known within the 
kingdom something which has been 
invented abroad. 

The reason of this is readily un- 
derstood when we consider the char- 
acter of the times in which the Eng- 
lish law on this subject may first be 
traced. The insular position of 
England and the imperfect, not to 
say dangerous character of travel, 
isolated her from the rest of the 
civilized world. Communication 
was limited and infrequent, and in 
every country patriotism took the 
shape of extreme jealousy of for- 



eigners. It is not hard to believe, 
then, that to import knowledge of 
an art from abroad was no small 
achievement, but might be regarded 
as rare merit. 

Thus in the Clothmakers of Ips- 
wich case, adjudged in the reign 
of James I, it is said, "If a man 
hath brought in a new invention 
and a new trade within the king- 
dom, in peril of Ms life and consump- 
tion of his estate or stock, cfcc, or if a 
man hath made a new discovery of 
anything, in such cases the King, 
of his grace and favor, in recom- 
pense of his cost and travail, may 
grant by charter unto him that he, 
only, shall use such a trade or traf- 
fique for a certain time, &c." 

To the development of invention 
in the sense of originating and de- 
vising, neither the intellectual nor 
the social condition of these early 
times was favorable. 

The mass of laborers and artisans 
Avere little more than human ma- 
chines, running in one rut, and as a 
rule lacking the desire or the intel- 
ligence to seek to better their modes 
and means of working, Avhile the in- 
tellectual efforts of those of higher 
rank and educated intelligence were 
not as yet fairly diverted from the 
unprofitable channels and myste- 
rious lore of a false and unprofit- 
able philosophy. Bacon's Avorks 
Avere but now startling the edu- 
cated few, and the leaven of that 
practical and humane philosophy of 
Avhich he was the first great exponent 
had 3'-et to commence its work on 



History of Property in Inventions. 



men's minds. The science of the 
times was perfectly barren. The 
artisans were not thinkers, and the 
thinkers had no acquaintance with 
the practical arts. There was yet a 
gulf, partly of social and political and 
partly of educational creation, sepa- 
rating cultured intelligence and 
practical industry, which must be 
allied before there can be fruitful 
invention. 

Nor were the political troubles of 
the time, succeeded as they shortly 
were by internal war, favorable to 
the development of the industrial 
arts. Moreover the science of phys- 
ics was yet to be reduced to rational 
principles, and new modes of thought 
to be developed, and this was the 
slow work of years. The applica- 
tion of science to the practical arts 
must come later. 

It is not to be wondered at then, 
that, as is observed in the excellent 
treatise of Hindmarch, •" for many 
years after the passing of the statute 
of monopolies the arts and manu- 
factures continued in a low state 
in England ; few of the inventions 
for which letters-patent were ob- 
tained were of any value, and the 
demand for novelties being very 
limited, no one was tempted to in- 
fringe the rights of patentees." 

It is not until the reign of G-eorge 
III that we find the subject of prop- 
erty in inventions attracting public 
attention. Then the troubles of 
Arkwright and of Watt, brought 
the subject of patents into court, and 
led to the earliest of that series of 



judicial reasonings upon the English 
law of patents, which gives that 
law what it has of system. 

We need not wonder that the 
early treatment of patents in the 
English courts was anything but 
liberal. The subject was a strange 
one, coming before them at a time 
when a very clear and high concep- 
tion of the importance and merit of 
inventors could hardly exist. 

In later years, as the exercise of 
the inventive faculties became more 
general and active, and had pro- 
duced results which forced a per- 
ception of the importance and value 
of original invention upon the public 
mind, a more liberal treatment of 
patents crept into the judicial prac- 
tice ; and the English patent law as 
it stands to-day is for the most part 
judge-made law, whose doctrines 
are founded upon reasoning as just 
and liberal, perhaps, as the bounds 
of the old legislation forming the 
text for the judicial commentaries 
will permit. 



The apparent public policy of en- 
couraging improvements in the use- 
ful arts, has led to the adoption 
by most civilized countries of patent 
systems more or less analogous to 
that of England. 

The earliest to adopt such systems 
were France and the United States. 

Our own patent system, first es- 
tablished by Act of Congress, in 
1790, and gradually developed and 
improved by subsequent legisla- 
tion, is based upon reasoning which 



History of Property in Inventions. 



seems, on the whole, pecuharly cor- 
rect, just, and liberal. 

It originated at a time and under 
circumstances favorable to the de- 
velopment of inventive activity, and 
which allowed a clear perception of 
the importance of invention to the 
domestic progress of the useful arts 
and its consequent utility to society. 

This led to a recognition of the 
principle oi private right which really 
underlies a patent system, and of 
the broad difference between patent 
privileges and monopolies, so called. 

A monopoly in its legal and odious 
sense, implies the taking away of 
some right from the many, for the 
benefit of particular individuals. 
Manifestly, then, the term is not 
applicable to letters-patent for new 
inventions ; that cannot be taken 
from the public, which the public 
has not ; a new invention or discov- 
ery can become public property, 
only by communication from the 
inventor or discoverer ; until so com- 
municated voluntarily, it remains 
the secret property of the latter. 

This view of the case shows that 
into the public policy of patents 
enter important considerations of 
public justice, an idea upon which 
we shall have occasion to dwell more 
fully in the course of this treatise. 

Looking to the question how far 
our patent system may be adjudged 
from experience to have proved con- 
sistent with the principles of justice 
and policy upon which it is based, 
we find, to begin with, that the 
number of patents issued in this 



country, is very largely in excess of 
that in any other patent-granting 
country ; that there is here a more 
general and widely-spread inventive 
activity than elsewhere ; that Amer- 
ican labor-saving machinery and 
devices are in demand the world 
over ; and that inventors enjoy in 
this community, a power and con- 
sideration without parallel abroad. 

The vast amount of work to be 
done in developing the resources 
and industries of this new coun- 
try, by a comparatively small and 
scattered population, with moderate 
pecuniary resources, has made labor- 
saving mechanism a peculiarly ser- 
viceable instrument of power, sup- 
plying the place of manual labor 
with greater accuracy and economy, 
and so increasing the productive 
power of capital. 

Thus, it is because of its pecu- 
liarly manifest utility to the public, 
that invention has here attained 
such dignity. 

How far has this been brought 
about by our patent system ? or in 
other words, how far has that sys- 
tem tended to incite and foster the 
exercise of ingenuity '? 

Our Patent Laws are, undoubted- 
ly, the most truly liberal of any. 
They more clearly than any other 
recognize the truths that productive 
industry is the basis of national 
wealth and power ; that such indus- 
try will flourish in proportion as 
it is made a secure source of indi- 
vidual profit ; that true invention is 
intellectual production of the most 



General Principles Governing Property in Liventions. 



beneficial kind, and that, therefore, 
true policy, which is always just, 
demands that it shall be made, as 
far as posssible, a secure source of 
individual profit. 

The benefit of the patent laws has 
been sought with avidity, and there 
can be no doubt that the advantages 
which they hold out have led to a 
multitude of inventions and novel 
disclosures, which otherwise had not 
been made. 

But many complaints and criti- 
cisms have been directed against 
the patent laws and their adminis- 
tration (some of them more or less 
just, no doubt, since an absolutely 
perfect system of human designing 
is hardly to be looked for), but for 
the most part we think fallacious 
and arising from a misapprehension 
of the true principles of the law. 

This misapxDrehension, it is be- 
lieved, is to be traced in great de- 
gree to the just favor and consider- 
ation with which inventors have 
been regarded, leading gradually to 
a somewhat one-sided and partial 
understanding of the laws affecting 
them. 

CHAPTEE II. 

GENERAL PRINCIPLES GOVERN- 
ING PROPERTY IN INVENTIONS. 

It is our purpose in this chapter 
to inquire first into the true nature 
and purpose of patent laws, for it is 
necessary to- ascertain this, before 
we can look with intelligence into 
the question of the justice and efli- 
ciency of our own law. 



The patent laws, as viewed in 
reference to inventors only, are the 
means of secimng temporary exclu- 
sive rights to the use of new and 
useful inventions, and it is not un- 
natural that inventors themselves 
should regard the laws in that light 
only. So viewing them, regarding 
themselves as the only parties inter- 
ested, they will look with impa- 
tience and disfavor upon those fea- 
tures in the laws, or the administra- 
tion of them, which may seem mere 
embarrassments or impediments in 
the way of obtaining patents. 

Yet this is not a true, because 
only a partial, view of the subject. 

It would be an unprofitable and 
unn6cessary task to touch upon the 
question of man's natural i^roperty 
in his own original ideas. It is suffi- 
cient to recognize the fact that as 
long as they are locked up in his own 
breast, they are likely to be of little 
benefit to himself or any one else ; 
to be of use they must, as a rule, be 
disclosed ; and when once disclosed, 
they cannot be stamped with the 
character of individual property, 
and be identified and protected as 
such, except through the medium 
of positive legislation. 

But society can he looked to for 
such legislation only if, and so far 
as it may be, consistent with the 
general welfare. 

Consequently it is in utility to 
society that we must seek the rea- 
son and justification of positive laws 
recognizing individual rights in con- 
nection with invention. 



10 General Princij^les Governing Property in Inventions. 



The progress of the useful arts is 
a most important branch of the 
general welfare, and inventors are 
the chief instruments for the ad- 
vancement of the useful arts. An 
inventor is not bound to disclose 
his invention ; he may, if he so 
elect, keep the knowledge of it to 
himself, but generally Ire cannot 
himself profit by its use, without, in 
the very act, disclosing it to others, 
and when thus disclosed, there is 
nothing in the absence of positive 
law on the subject to i^revent other 
members of the public from avail- 
ing themselves of an idea, which 
has then in a certain sense become 
public property. 

Evidently, in a state of society 
where for an inventor to disclose his 
invention is altogether to lose, Avith- 
out return, the special benefit of 
it, and of the labor and expense he 
may have bestowed upon it, there 
is little or no encouragement for the 
exercise of ingenuity, and the ex- 
penditure of thought, time, labor, 
and money in the bringing to light of 
new inventions. Men will not Avil- 
lingly sow merely for others to reaj). 

It may be said that the inventor 
derives a profit from his original 
thought, in the advantage wliich it 
gives him over competitors, by way 
of increased facihties or economy in 
the prosecution of his business. But 
if he cannot hope to maintain this 
power longer than he can keep it 
secret, but must upon accidental 
disclosure share his advantage with 
all his competitors, so that he will 



then occupy no better position rel- 
atively than before, plainly the in- 
ducement to invention is small in- 
deed. 

It is to be considered, moreover, 
that in an active condition of the 
inventive mind, a vast number of 
original ideas must be produced, 
which have no relation to the par- 
ticular employment of the inven- 
tors, and for the encouragement of 
such a general active condition, 
therefore, some special inducement 
must exist. 

Some few inventions there are 
which may be practiced in secret, 
and no doubt valual^le and import- 
ant discoveries have in this way died 
with their originators, and so been 
lost to the world. Of such conceal- 
ment it is desirable that there should 
be as little as possible, not only be- 
cause it tends to deprive the public 
of useful knowledge, but because it 
tends to destroy confidence, and 
arouse doubt and suspicion, hamper- 
ing business, and interfering with 
peace and good order. The conceal- 
ment of inventions, where it may 
appear practicable, will, perhaps, 
always be to some extent indulged 
in, but it is evidently impolicy on the 
part of the pubhc to encourage such 
concealment, by totally ignoring the 
interests of inventors. 

The mischiefs, public and private, 
likely to proceed from compelling 
inventors to secrecy, have been thus 
forcibly represented by an accom- 
plished writer : 

"A manufacture conducted in se- 



General Principles Governing Property in Inventions. 11 



cret, is at an enormous disadvantage. 
Processes must be separated, that 
the workman may not appreliend 
the mystery ; immense wages must 
be paid to retain them from desert- 
ing to competitors ; simpUcitymust 
be avoided, and expense introduced, 
for no purpose but to complicate 
and confuse the methods used. Ex- 
periments for further improvement 
must be avoided, for they would not 
only tend to disclosure, but to the 
loss of the outlay incurred in estab- 
lishing the existing expensive meth- 
ods. After all, if the attempt to 
maintain the secret were successful, 
the public would be no gainers, for 
it would constitute a strict mo- 
nopoly, and, unlike a patent, a mo- 
nopoly that would be lasting either 
till the secret was discovered, or 
till it died with its first employers." 

To this it need only be added that 
in such a state of affairs, many im- 
portant improvements would be for- 
ever lost, from the inability of the in- 
ventors to undertake the burden of 
practicing them secretly, and their 
natural unwillingness to run the risks 
of disclosing them to persons who 
might assiime that burden. 

The relative positions then, of the 
pubUc and inventors, and the conse- 
quences i3roceeding therefrom, may 
be thus summarized : 

I. The j)ublic is vitally interested 
in the progress of the useful arts, 
and to this progress the production 
and disclosure of original invention 
are essential : it is the clearest puljlic 
policy to encourage such production 



and disclosure by any jDroper 
means. 

II. Inventors, in producing and 
disclosing improvements in the use- 
ful arts, add materially to the pub- 
lic stock of wealth and power, and 
are therefore j)roducers of the high- 
est order ; and as payment is the 
rightful consequence of physical or 
mental labor, time, and cajjital ex- 
pended in j)roduction, it would seem 
the clearest jJ^i6Kc justice that some 
mode should be provided of remune- 
rating inventors in proportion to the 
value of their productions and dis- 
closures. 

III. From the preceding proposi- 
tions it follows that the pubhe object 
of promoting the progress of the 
useful arts is that which allies the 
interests of the public and those of 
inventors. The consideration which 
passes from the inventor to the pub- 
lic, entitling him to some return, 
is his contribution to that progress. 

AYe come then to the conclusions 
that, practically speaking, the rights 
of inventors, as such, are those cre- 
ated by positive legislation ; and 
that the object of legislation, in 
creating such rights, is to promote 
the progress of the useful arts by pro- 
viding some mode by which inven- 
tors may be remunerated for their 
instrumentality in promoting that 
progress. 

Thus we find the true object of 
our own patent system in the title 
of the original act of 1790, and of the 
succeeding acts: "An Act to jiro- 
mote the progress of the useful arts. " 



12 



Of Patents as a Mode of Remunerating Inventors. 



CHAPTER III. 

OF PATENTS AS A MODE OF RE- 
MUNERATING INVENTORS. 

The propositions admitted, that 
it is both ]Dolitic and just — having 
regard to the progress of the useful 
arts — to iDrovide some mode in which 
inventors may derive personal profit 
from their contributions to that 
progress, the next point to be as- 
certained is the best mode. 

That which is the most obvious, 
is the payment by the state of a 
stated price or premium, but there 
are many and obvious objectiojis to 
this mode. It could not be practi- 
cally carried out with even justice 
to the public and to inventors, and 
it would entail a cumbrous and ar- 
bitrary system peculiarly open to 
abuse. It would be necessary either 
that the law itself should ascertain 
and fix valuations for inventions 
generally — manifestly an absurd 
and impractical thing, and one 
which, if attempted, would Avork 
injustice, sometimes to the public, 
and sometimes to inventors, — or the 
fixing of values must be left to 
tribunals, whose decisions would, 
of necessity, be arbitrary and un- 
satisfactory, snice they could not 
apply to the determination of the 
question the only reasonable and 
just test, that of experience. 

These, and other objections 
equally obvious, but to which it is 
not to our jDurpose here to allude, 
make it plain that a system of this 
kind would not well answer the end 



of promoting the progress of the 
useful arts. 

The objections which we have 
cited, going to show what is not a 
good and efficient mode, point to the 
principles necessarily governing a 
mode which is so 

It is just and proper that a new 
and useful invention should be paid 
for hy the public, in proportion to 
its proven value to the public, and 
that the mode of valuation should 
be the same as in the case of other 
products of individual skill and 
labor. 

The public verdict, as evidenced in 
demand, is the best general test of 
the value of an article, and the profit 
derived from manufacture and sale, 
if these be carried on with proper 
enterprise and discretion, will be in 
proportion to the value. 

This is the philosophy of that 
mode of paying inventors which is 
known as the j)atent system ; a 
mode the most just and reasonable 
that could be devised. 

Letters-i)atent grant to the in- 
ventor of a new and useful improve- 
ment the exclusive right, for a 
stated period, of making, using, and 
selling such improvement 

If an invention thus secured for a 
time by patent be really valuable 
and important, it is of course desi- 
rable that it should be brought into 
public use as speedily and widelj'- 
as possible, and here the interests 
of the public, and those of the in- 
ventor are alike, for the advantage 
which the latter can derive from 



Of Patents as a Mode of Remunerating Inventors. 13 



his patent, must altogether depend 
upon his dihgence and discretion in 
avaihng himself of the exclusive 
right which it gives him. If, on the 
other hand, the invention be of no 
value and importance, the exclusive 
right of the inventor is altogether 
harmless ; it will be practically no 
restraint upon the public, and will 
bring the inventor no more than 
he is entitled to. 

Patents — in so far as they operate 
as a resti-aint upon the public — are 
yet decidedly beneficial restraints, 
for during the term of the inventor's 
exclusive right, the public are bene- 
fited in the open practice by the in- 
ventor liimself, or those acquiring 
the right from him, of an invention, 
which, but for the pros^Dcct of that 
right, might not have been made, 
or having been made, might not have 
been disclosed. So far as the exclu- 
sive right operates as a tax upon the 
pubhc, it is a tax justly i^roportion- 
ate to the ascertained value of the 
consideration given by the inventor ; 
and after the exclusive right has 
expired, the public freely use the 
invention themselves, being enabled 
to do so by the knowledge which 
the inventor has imparted to them. 
These then are the principle and the 
object of a patent system : to pro- 
mote the progress of the useful arts 
by extending to inventors that en- 
couragement to exert their inge- 
nuity, and disclose their inventions, 
which can be given with most ad- 
vantage, both to the inventor and 
the community, in the shape of a 



temporary exclusive right to the 
former to make, use, and vend his 
invention. 

Thus viewed, the patent laws as- 
sume the aspect of a compact be- 
tween inventors and the public, by 
which the public in consideration of 
the disclosure by the inventor of an 
original thought which it is not 
compulsory upon him to disclose^ 
3^et of which, without such disclo- 
sure, neither he nor they can have 
the use and enjoyment, undertake 
to secure to him for a limited period, 
by j)ositive grant, that exclusive 
right in his invention, which with- 
out such iDOsitive grant, it would be 
impossible for him to maintain. 

The policy of patents as a means 
of promoting the lorogress of the 
useful arts, has been disputed, never 
seriously, however, in this country. 
In England the proposition has been 
made, and urged more loudly than 
forcibly, to abolish patents ; but 
there the would-be abolitionists are 
a very small minority, and their 
views have been vigorously and suc- 
cessfully combated by some of the 
leading intellects of the country. 

Holland stands alone as the coun- 
try which has abolished patents. 
The abolition occurred in 1869, the 
royal proclamation stating that "the 
grants of exclusive rights for inven- 
tions and improvements or importa- 
tions of objects of art and industry 
promote neither industry nor public 
interest." 

In its experience on this subject, 
Holland seems to be as exceptional 



14 Of Patents as a Mode of Remunerating Inventors. 



a country as it is in everything else. 
"Such a land as Holland," says a 
recent American writer, "exists 
nowhere else. It is not merely the 
most singular of kingdoms, it is the 
only one of its kind. You may travel 
the world over and yet be unable to 
form any conception of the Nether- 
lands. You may live there your life 
long, and form no adequate idea of 
the remainder of the globe." 

It is not at all unlikely that among 
a people so conservative and self- 
satisfied as the Hollanders, patent 
laws did not promote industry. The 
peoi^le, though robust, brave, and 
industrious, appear to have a horror 
of innovation, as is attested by their 
obstinate adherence to sleighs in 
place of wheeled vehicles, for draw- 
ing heavy loads over rough pave- 
ments. Little progress in the useful 
arts is to be expected in a country 
where men and horses continue to 
be shod with wood, and where men, 
women, and children are still to be 
found yoked to the same tow ropes 
with dogs and donkeys on the banks 
of the interminable canals. 

It may be very true that the Dutch 
patent law did not promote the j)ro- 
gress of the useful arts in Holland ; 
great progress would scarcely be ex- 
pected aiaiong a people so obstinately 
conservative, no matter what in- 
centives were offered ; but the Dutch 
law was so intensely selfish in its 
character that it would scarcely be 
expected to j)romote any public ad- 
vancement in the arts, one of its 
prominent clauses being to the effect 



that a native forfeited his patent if 
he secured his invention in any other 
country.* 

The patent abolitionists were un- 
fortunate in pointing to the example 
of Holland, a country where the 
Limited manufacturing interests are 
at a standstill, if not retrograding, 
and where the prominent products 
are gin, tulips, and cheese. 

Switzerland, a country which 
never possessed any patent laws, is 
also pointed to by the advocates for 
the abolishment of patents. In re- 
spect to Switzerland, Mr. Day, in 
his able papers read before the Philo- 
sophical Society of Glasgow, papers 
from which we shall have to quote 
hereafter, says : " "When do we hear 
of an important invention coming 
to maturity in this country ? There 
is plenty of inventive talent in 
Switzerland, but Swiss inventors 
lack the stimulus of a patent law, 
and, therefore, have to come here or 
go elsewhere where an invention can 
be patented, and is recognized by 
the state as bona fide property." 

To again quote from Mr. Day's 
book: "The patent system is the 
only one by which a nation can secvire 
the maximum advantage from the 
invention, the only one by which in- 
vention is properly encouraged, the 
only one by which the real value of 

* A Dutch legislator, in advocating the aboli- 
tion of patents, declared that it was useless to 
point to the United States and England in sup- 
port of Patent laws, because those countries 
were in a degenerate condition, not better than 
that of Holland at the close of the sixteenth 
century. 



Essential Features of a Good Patent System. 



15 



an invention can be ascertained, and, 
therefore, the only one which can 
secure not merely reward, but a due 
reward, precisely its exact worth to 
the inventor." 

CHAPTEE IV. 

ESSENTIAL FEATURES OF A GOOD 
PATENT SYSTEM. 

Assuming it to be politic and 
just to provide some mode in which 
the pubhc shall pay inventors for 
their contributions to the progress 
of the useful arts, and that the best 
mode is by a properly devised patent 
system, we come next to consider 
what should be the characteristics 
of such a system. Undoubtedly 
the soundest patent law is that 
which treats inventors with the 
most hberality, on the plain grounds 
that the more liberal the law, the 
more it is likely to answer its pub- 
lic purpose of j)romoting the prog- 
ress of the useful arts, by induc- 
ing the production and disclosure 
of new inventions. 

But this idea of liberality to in- 
ventors is not to be carried so far, 
as to lose sight of the public object 
of the law, and of the fact, that 
having a reference to that object, 
inventors are simply the instru- 
ments and means. In other words, 
it is not to be forgotten that the 
utility of inventors to society is the 
consideration upon which the legal 
rights peculiar to them as inventors 
are based ; that they occupy pre- 



cisely the same footing as other pro- 
ducers to the public stock, and that 
society, in contracting to pay them, 
has the right to establish such pro- 
visions and conditions, as are neces- 
sary to assure that in each case the 
effect of the contract shall accord 
with its object and with the general 
welfare. 

If these principles were continu- 
ally and clearly borne in mind, we 
should have less of that criticism of 
the patent laws, based upon the 
false assumption, often expressed, 
that their one object is to " pro- 
tect inventors. " That is their end 
so far as concerns the particulai' 
interests of inventors, but they 
have a superior and public object, 
that of promoting the j)rogress of 
the useful arts ; with reference to 
this object, the "protection of in- 
ventors " is simply the means. 

The proper liberality of the law 
to inventors is based not upon 
poetic sentimentality but upon per- 
fectly utihtarian grounds and princi- 
ples of practical justice. 

Of the patent laws, therefore, as 
of any other contract, the justice is to 
be measured by the degree to which 
they appear to consult and recon- 
cile the interests of all parties con- 
cerned, and to proceed upon the 
truth that the intended beneficial 
operation of the bargain must be 
destroyed by any provisions tend- 
ing to antagonize the interests of 
the respective parties. 

If this test be applied to our own 
patent system, we believe it will be 



16 



Essential Features of a Good Patent System. 



found that the provisions and con- 
ditions wliich seem to he in tlie in- 
terests of the puhhc, are also really 
to the advantage of inventors ; that 
the same precautionary measures 
work to the profit of both parties to 
the contract. 

But before proceeding to apply 
the test, let us see what are the 
leading principles which, having due 
reference to the object to be attained, 
may be considered as essential to 
be recognized and followed by any 
sound patent law. 

It is evident, to begin with, that 
new and useful inventions only, can 
be the subject of valid patents ; 
for if an inventor produce and dis- 
close something which is not new, or 
something which cannot be used, 
or which it is against the interest of 
society to allow to be used, he 
simply gives society that which it 
had before, or that from wliich it 
can derive no benefit : which is to 
give nothing ; so that society owes 
him nothing. A patent, therefore, 
granted for such an invention, would 
be invalid for want of consideration. 
• Presuming the invention to be 
new and useful, it is no less essen- 
tial to the validity of the patent that 
it shall have been fully and fairly 
disclosed by the inventor ; other- 
wise his part of the compact has not 
been carried out in good faith. 
There must be no concealment, no 
deception, but the information given 
must be sufficient to guide those 
skilled in the art to a beneficial use of 
the invention, so that the public may 



fully and freely advantage by it after 
the expiration of the patent, v 

In addition to this it is essential 
that the inventor shall have clearly 
pointed out and particularized what 
he claims to be original with him, 
tliat the public, during the existence 
of the patent, may be fully advised 
as to the nature and extent of the 
exclusive right which it confers, and 
as to what it is they are restrained 
from making, using, or selling, save 
with the permission of the patentee. 
As to this there should be no dis- 
simulation, duplicity, or dubious- 
ness, but a clear and candid state- 
ment of claim. ' 

Now it is manifestly just both to 
the public and inventors to insure 
as far as possible that none but valid 
patents shall be granted ; that is to 
say, such as do in truth bestow that 
exclusive right which Ihej ^yurport 
to bestow. 

This is just to inventors, because 
the value of patent property, as of 
any other, Is in proportion to its 
ascertained degree of certainty and 
security; and just to the public, be- 
cause the issue of valid patents only 
is j)lainly an important element in 
the efficiency and public advantage 
of a patent system. 

It would seem then to be the 
important end to which the provi- 
sions of a patent law should pri- 
marily be directed, to confine the 
issue of patents as far as possible 
to inventions new and useful, clearly 
disclosed, and distinctly claimed. "^ 

A second object to be realized to 



American Patent System — Previous Official Examination. 17 



the fullest extent possible, consis- 
tently with the maintenance of the 
first, is that patents shall be easily, 
speedily, and cheaply attainable, so 
as to be within reach of rich and 
poor alike. 

Here, too, the interests of the 
public and inventors are identical, 
for the more easily and cheaply 
valid patents can be obtained, the 
greater will be the number of new 
and useful inventions made and 
disclosed, and the more rapid in 
consequence the progress of the use- 
ful arts. 

iSTaturally enough, inventors anx- 
ious to obtain their patents, and 
inclined to look upon the grant as 
matter of natural right, are apt to 
look upon this second object as the 
most important. But a little re- 
flection "^vill convince them that the 
matter of prime importance to them 
is the degree of confidence which 
they can place in the validity of 
their patents, and that a reasonable 
expense of time and money in ne- 
cessary proceedings to ascertain, 
before a patent is granted, that it 
shall have the essentials to validity, 
is beneficial to themselves. 

In this regard, too, the interests 
of inventors and the interests of the 
public are the same. 

It is to the advantage of both — 
it is the right of both — that, while 
the issue of valid patents shall be as 
free as possible, the execution of the 
law shall yet be so regulated that the 
smallest possible number of invalid 
patents shall escape into existence. 



CHAPTEE V. 

THE AMERICAN PATEXT SYSTEM. 
PREVIOUS OFFICIAL EXAMINA- 
TION. 

We now come to the considera- 
tion of the more immediate subject 
of this treatise, — the merits of the 
American patent system. And first, 
as to that examination into the 
novelty and utility of an invention 
before granting a patent, which is 
the main distinguishing feature of 
the system. This peculiarity is a 
recognition of the principle to which 
we have above referred, that the 
first point of importance, both to 
the public and to inventors, is to 
provide for ascertaining, ''hefore a 
patent is granted, that the invention 
is new, useful, and clearly described 
and claimed. ■> 

But perhaps the intent and effect of 
this previous examination can best 
be understood by comparison with 
foreign systems, of which it forms no 
part ; that of England, for example. 

In England patents are, to all 
practical intents and purposes, 
granted for the asking, without in- 
quiry as to whether the inventions 
sought to be patented are either new 
or useful, or sufficiently described. 

The time and mode for determin- 
ing these questions are after the 
grant of the patent, through the 
mediurn of court or jury. 

It is plain, therefore, that an 
English patent carries with it no pre- 
sumption of validity, unless, having 
undergone thorough scrutiny in the 



Previous Official Examination. 



course of litigation, it lias been in- 
dorsed by court or jury. 

Of what satisfaction and value to 
the inventor, it may be asked, is a 
patent upon which he cannot place, 
nor expect others to place, any de- 
gree of confidence, unless it shall 
have successfully passed through the 
fire of litigation. 

Such a system is a dejiarture from 
the true principles of good legisla- 
tion, whose highest oflice it is to cut 
off sources of litigation. 

For this end are designed the 
numerous regulations which the 
laws iJrovide, touching the acquisi- 
tion, holding, and transmission of 
all kinds of property, with a view 
to ascertain, define, and publish the 
nature and extent of individual 
rights, that there may be the least 
possible occasion for those mis- 
takes, and that confusion or conflict 
of claims from which litigation 
springs. 

And certainly patent property 
should not be excepted from, but 
should rather receive an unusual 
degree of this solicitude of the law, 
for it is property which the law itself 
has created for the public benefit, 
and which, therefore, not only pub- 
lic policy but public good faith re- 
quires should be most carefully and 
tenderly guarded from the mischiefs 
of litigation. 

The English patent law, there- 
fore, in making htigation necessary 
to raise any practical presumption 
of the validity of a patent, is cer- 
tainly an anomalous law. 



An English patent which has not 
yet been successfully litigated is 
naturally an object of doubt and 
suspicion — a state of afliairs produc- 
tive of two classes of evils : First, 
the very inferior value of patents as 
negotiable property, an evil which 
that large class of inventors lacking 
capital will readily appreciate ; and, 
second, the constant and aggrava- 
ted violation of patent rights which 
must ensue from the general disre- 
gard in M^hich those rights, from 
their uncertainty, are held. 

It is manifest that under such a 
system the field of patent property 
is a mere scrambling-ground, Avith 
all the odds in favor of the wealthy 
and the unscrux^ulous. A poor pat- 
entee will be fortunate indeed if he 
is able to make his patent a som*ce 
of profit to himself ; the chances are 
that he will be driven to his election 
whether quietly to submit to the 
Avholesale piracy of his rights, or 
whether dearly to purchase the alli- 
ance of capital for the maintenance 
of those rights at the sacrifice of the 
lion's share in them. 

In this way patents, while they 
may serve to enrich the rich, are a 
very doubtful blessing to the poor. 
The privilege which such a patent 
confers, is, substantially, the privi- 
lege of establishing a right, if one 
can, by a laAvsuit, a species of in- 
vestment in litigation in which none 
but a litigious man can find enjoy- 
ment, and none bvtt a wealthy man 
can indulge. 

It is true, that the inventor of a 



Pi^evious Official Examination. 



19 



really valuable improvement maj^ 
find some protection in the enterprise 
of capitalists desirous of obtaining 
the benefit of it, but this is an acci- 
dental and not ahvays desirable sort 
of protection. 

It is, perhaps, one of the strongest 
possible arguments in favor of a 
patent system, that the English 
system, inefficient and unjust, as 
in many respects it is, and very ex- 
pensive, has yet undoubtedly done 
much io foster the practical arts, 
and is resorted to by a large number 
of inventors. 



Such evils as we have iuaicated, 
the sj'stem of previous examination 
adopted by our law is intended to 
obviate as far as possible. Abso- 
lutely to remove patent or any other 
property from the region of doubt 
and litigation is impossible, and 
however perfectly adapted to this 
end the theory of a law may be, its 
administration must, if only from 
unavoidable errors of judgment, fall 
short of attaining a practical realiza- 
tion of that theory. "VYe say this be- 
cause of the complaints and crit- 
icisms which have from time to time 
been directed against our law ; un- 
doubtedly the majority have arisen 
from particular instances of failure 
or shortcoming in the administra- 
tion of the la"sv. 

It is not our purpose here to con- 
tend that the past or present ad- 
ministration of the examining sys- 
tem was or is perfect, or so nearly 
perfect as it might be. It is no 



doubt the case that the capacity of 
the machinery of achninistration 
has not kept pace with the rapidly 
growing demand upon it, and time 
and experience have suggested, and 
will continue to suggest desirable 
additions and modifications in de- 
tail. 

But from the complaints, just and 
unjust, made against the adminis- 
tration of the examining system, 
have been deduced arguments that 
the system itself is a failure, a posi- 
tive disadvantage and should be 
abolished. 

The very doubtful soundness of a 
conclusion thus arrived at is pretty 
apparent. It is not a fair conclu- 
sion, unless it be shown that the 
defects of administration are not 
the accidents liable to arise in any 
administration, but are defects origi- 
nating and inherent in, and insepa- 
rable from the very nature of the 
particular system administered. 
When it is shown that the best at- 
tainable means of administration 
have been tried and have resulted 
in the same faults and defects as 
inferior means, then it is allow- 
able to assume that the system can- 
not be administered, and should 
be abolished ; but in this case the 
complaints, so far as they are true, 
are such as indicate very possible 
improvements of administration. 

Since, however, this subject of the 
advantage or disadvantage of an 
examining system is one of great 
importance and has attracted much 
discussion pro and con, it is worth 



20 



Previous Official Examination. 



while to look into the complaints 
which have been urged against our 
system to see how far these com- 
plaints are justifiable, and entitled 
to the great weight which has been 
given to them. 

It is necessary, first, to strip the 
question of a very common fallacy, 
arising from an utter misunder- 
standing of the law, but which is 
often advanced as a proof that the 
system of previous examination is 
not effective. It is undoubtedly 
the fact that an exceedingly large 
proportion of patents granted are 
for trifling things, or for things 
valueless, because inferior to pre- 
viously existing things, for the same 
or a similar j)urpose. Now, it is 
asked, why does the government, 
which pretends to grant patents 
for new and useful inventions only, 
constantly issue patents in large 
numbers for useless and trifling no- 
tions? Such a question is simply 
an entire misapprehension of the 
intent of the law, and of the mean- 
ing of the word useful as employed 
in the statute. The word "useful " 
is not there synonymous with the 
word "valuable," nor does it indi- 
cate that an invention to be pat- 
entable must api^ear to be more 
efficient than, or even equally effi- 
cient with, prior inventions of the 
same class ; but it simply means 
that to be patentable, an invention 
must be capable of use for some bene- 
ficial purpose, and not inoperative, 
vicious, or immoral. These are 
questions which can be decided 



soundly and justly by a comjDeteiit 
tribunal, from the evidence afforded 
by the application for a patent. 

But the value of an invention, 
which consists in its utility to the 
public at large, or more immedi- 
ately to those concerned in that 
branch of art to which it relates, 
can evidently be determined only 
by time and experience in actual 
use ; the only just verdict must 
be one rendered by the public from 
use ; no law, nor man, nor set of 
men, can justly undertake to pre- 
determine the question, since such 
a decision must necessarily be utter- 
ly arbitrary, and mere matter of 
opinion based upon insufficient evi- 
dence. 

This point we have already un- 
dertaken to illustrate, in discussing 
the question of the proper mode of 
paying inventors for their contribu- 
tions to the progress of the useful 
arts ; and we observed that patents 
were the fairest mode, because in 
leaving the question of the value of 
each particular contribution open, 
to be decided in the only proper 
way, they give to the inventor the 
opportunity, by the exercise of ordi- 
nary diligence and discretion, of 
deriving a remuneration proportion- 
ate to that value, as thus most 
soundly tested and determined. 

To be sure there are many cases 
in which ordinary perception and 
common sense, could without ap- 
plying the tests of use and experi- 
ence, soundly and justly determine 
the worthlessness of an invention, 



Previous Official Examination. 



21 



but in all cases such a mode of 
decision would be objectionable as 
arbitrary, and in very many cases 
would be at fault and unjust. 

It would not be just to inven- 
tors generally, and there must be 
one rule of justice for all, to at- 
tempt to make this qviestion of value 
a subject for legal or official decision, 
nor would it be in any way benefi- 
cial to the public. It is equally to 
their interest and to that of inven- 
tors,* that every new idea should be 
allowed the test of practical experi- 
ence. » There is no reason why in- 
ventors should not have the same 
opportunity, as other producers, of 
submitting their productions to pub- 
lic arbitrament. Jfor can patents 
for valueless inventions be objected 
to as working any legal injury to the 
public, for patents cannot practi- 
cally operate as a restraint or as a 
tax upon the public with reference 
to things wliich, being of no advan- 
tage, they do not care to use. 

There is no doubt that patents 
for valueless inventions have a mis- 
chievous effect in leading to lament- 
able wastes of valuable time and 
money ; but this palpably is some- 
thing for which the patent laws and 
their administration are in no way 
answerable. The evil in great mea- 
sure arises from the very misappre- 
hension of the law which Ave have 
been discussing, and Avhich causes 
people to accept patents in the way 
of official evidence, which they are 
not, of the value of the things pat- 
ented, and thus to conclude that 



they are valuable, without inquiry 
or even against the evidence of their 
own senses. This of course is a 
voluntary error, for which the person 
in error is alone responsible. 

And for the evil, so far as it arises 
from mere lack of discretion, or 
knowledge in individuals investing 
their time and money in patented 
inventions, to hold the patent sj'S- 
tem responsible, or to draw there- 
from an argument against that sys- 
tem, is about as reasonable and logi- 
cal as though a man, having stupidly 
wasted his money upon a poor piece 
of land, should cast the blame upon 
Nature for having placed the land in 
his way. 

It is true that our Patent Act au- 
thorizes the Commissioner to issue 
patents where he shall find the in- 
ventions sufficiently useful and im- 
portant, and this might seem to give 
the Commissioner a discretion ca- 
pable of much latitude in its exer- 
cise, in adjvidgmg as to the patent- 
ability of inventions. But this 
discretion is to be exercised in ac- 
cordance with the known policy and 
principles of the law — as judicially 
settled — and the inquiry of the Com- 
missioner is to proceed no further 
than to ascertain that the invention 
has that negative sort of utihty 
which is necessary for the support 
of a patent if granted. 
*"By useful invention in the 
statute (said Judge Story) is meant 
such a one as may he applied to some 
use ; beneficial to society in contra- 
distinction to an invention which is 



22 



Previous Official Examination. 



injurious to the morals, the healtli, 
or tlie good order of society. It is 
not necessary to establish that the 
invention is of su.ch general utility 
as to supersede all other inventions 
now in practice, to accomplish the 
same purpose. It is sufficient that 
it has no noxious or mischievous 
tendency, that it may be applied to 
jDractical uses, and that so far as it 
is applied it is salutary. If its prac- 
tical utility he very limited, it will 
follow that it will he of little or no 
profit to the inventor; and if it he 
trifling, it will sink into utter ne- 
glect. The law, however, does not 
look to the DEGREE of utility ; it 
simply requires that it shall be 
capable of use, and that the use is 
such as sound morals and policy do 
not discountenance or prohibit."* 

The same doctrine is enunciated 
in numerous decisions, and points 
clearly to the bovmds of the Com- 
missioner's discretion in this matter. 
It extends no further than that, be- 
fore issuing a patent, he should sat- 
isfy himself that the invention has 
utility as distinguished from utter 
impracticability or noxious ten- 
dency, and importance as distin- 
guished from absolute frivolity. 
The question of value then, in its 
ordinary relative signification, the 
patent laws very properly do not 
bring into consideration as in any 
way entering into the question of an 
inventor's legal title to a patent, 
and it is a fallacy to suppose that 
the sj^stem of previous examination 
is intended to inquire into or deter- 



mine the point of value as thus 
understood. 

Curiously enough upon this same 
fallacy is based a very common ac- 
cusation of injustice against the ex- 
amining system and its adminis- 
tration. It is often gravely ob- 
jected, and was so but a short time 
since by one of our leading public 
journals, that the power conferred 
upon the officers of the patent office, 
of judging upon the value of inven- 
tions, is too arbitrar}^ and danger- 
ous a power. 

So it would be if it did but exist. 
This objection in fact evidences a 
popular recognition of the truth 
which we have been endeavoring 
to illustrate, that an examiniiig 
system extending to the question 
of value could not be justly ad- 
ministered. To the assertion that 
no such power exists, it may be re- 
plied that officers of the patent office 
have been known to exercise such 
a power. True enough, and this 
merely goes to show that among 
the numerous officials of the patent 
office some majr, from time to time, 
be found who, from misunderstand- 
ing of duty, exceed their powers, 
and usurp an unlawful jurisdiction. 

That ordinarily no such power is 
attempted to be exercised is best 
proven by the large number of pat- 
ents issued for things of indifferent 
value or of no value at all. This 
fact, used as an argument against 
the efficienc}' of the examining sys- 
tem upon the hypothesis that an 
inquiry into value is part of that 



Previous Official Examination. 



23 



system, exposes at once the fallacy 
of that hypothesis, and that of the 
allega.tion of injustice based upon 
it. 

Returning to the fact that officers 
of the Patent Office have been known 
to exceed their duty, by pronouncing 
judgment upon the value of inven- 
tions, this of course is a just ground 
of complaint, certainly, however, 
not against the examining system, 
in a departure from whose princi- 
ples the wrong consists. 

If the wrong were prevalent, there 
would be very good ground for as- 
serting that the administration of 
the law was not in accordance with 
the law ; but that the wrong is not 
prevalent the patent lists are con- 
vincing proof. 

Still another very common falla- 
cy is that which holds the examin- 
ing system responsible for the many 
patents of little or no value, not 
because they refer to inventions 
of little or no value, but because 
the specifications and claims have 
been defectively and insufficiently 
drawn. This is something for which 
the patentees are alone responsi- 
ble ; • it is at once their privilege 
and their duty to specify what 
it is they claim to have invented.* 
The functions of the officers of the 
Patent Office are advisory no fur- 
ther than to ascertain before grant- 
ing a patent that the alleged inven- 
tion is intelligibly described,* and 
that the claim made is certain and 
distinct. « This much they must of 
necessity do in undertaking to look 



into the question of novelty and 
utiHty. And if the description be 
not sufficiently clear, or more is 
claimed than the applicant is enti- 
tled to, it is their duty to tell him so, 
that he may amend or modify his de- 
scri^jtion or claim accordingly. But 
it is no part of their duty to volun- 
teer information that less has been 
stated or claimed than might have 
been ; this would be uniting the 
functions of judge and counsel, and 
assuming a duty which the law very 
properly leaves to the inventor him- 
self. • It is a fair presumption that 
the inventor is a competent guar- 
dian of his own interests, so far as 
concerns the disclosure of his own 
ideas, and the presentation of his 
own claim. That he will claim less 
than he thinks himself entitled to is 
not to be supj)Osed.» liTor does the 
case difier, though the inventor him- 
self be incompetent to state his in- 
vention and claim with proper skill, 
for in such case it is incumbent 
upon him to seek the counsel of 
those who can perform this duty for 
him. The strict impartiality requi- 
site to the faithful performance of 
the duties of an officer of the Pat- 
ent Office must prohibit any such 
officer from placing himself in the 
position of an advocate for the in- 
ventor whose claim he is to pass 
upon. It is a common expression 
that the Patent Office is the guar- 
dian of the interests both of inven- 
tors and the public ; and this is true 
so far as its meaning refers to the 
exercise of careful and impartial dis- 



24 



Ordinary Criticiams of the Patent Office Considered. 



crimination and judgment in pass- 
ing upon claims of invention. 

It is the duty of the OflQce to give 
the patent asked for, if the claimant 
appears entitled to it, or to give him 
information as to any facts which 
may appear to render the claim 
made inadmissible. The rest may 
well be left to the inventor himself, 
for^he is to be dealt Avith as an in- 
telligent man, capable of taking care 
of his own interests, and not as an 
incompetent under wardship. « 

CHAPTER VI. 

ORDINAKY ClUTICISMS OF TUB 
PATENT OFFICE CONSIDERED. 

The observations in the preceding 
chapter show that the true crite- 
rion by which the eflticiency and jus- 
tice of the examining system is to be 
measured, is not the number of pat- 
ents for things of indifferent or no 
value, nor the number of patents 
with indifferent claims. 

The true question is, how far has 
the administration of the examin- 
ing system been successful in pre- 
venting the issue of patents for old 
or iinpatentable inventions, or for 
inventions previously patented ? and 
how far has its success in this direc- 
tion been neutralized by accidents 
and shortcomings injurious to in- 
ventors and the public ? 

The efficiency of the administra- 
tion of the Patent Office, in this re- 
gard, may be superficially illustra- 
ted by official figures. Thus taking 



the Commissioner's report for 1870, 
we find in that year 19,171 applica- 
tions for letters-patent were made, 
and it Avould appear that an average 
of a little over one-fourth as many 
were rejected for want of patenta- 
bility, chiefly of course for lack of 
novelty. Supposing all these rejec- 
tions to have been for just and suffi- 
cient cause, the system in the year 
1870 saved the public and inventors 
from the issue of nearly 5000 invalid 
patents. 

But it is not pretended that these 
figures show the actual state of the 
case. We cite them here as a spe- 
cies of starting-point and guide in 
estimating the weight of the various 
pertinent criticisms urged against 
the examining system and its ad- 
ministration. These criticisms may 
be divided into three classes. 

1st. That patents are granted for 
old things, or for things previously 
patented to others, or for unpat^nt- 
aljle things. 

2d. That patents are refused for 
things which are patentable. 

3d. That unnecessary expenses 
and delays are occasioned in the 
procuring of jjatents. 

Without denying that there is 
truth in each and every one of these 
complaints, we propose to show that 
from the very nature of things the 
evils complained of have been 
greatly exaggerated ; that so far as 
they have existed beyond that degree 
which it would perhaps be impossible 
to avoid, they are traceable to cer- 
tain defects of organization which 



Ordinary Gt'iticisms of the Patent Office Considered. 25 



may be cured ; and that they have 
been altogether overbalanced by the 
good which the system, though im- 
perfectly administered, has never- 
theless worked. 

Coming first to the charge that 
despite the examining system, pat- 
ents are granted for old things, or 
things previously patented to others, 
or unpatentable. 

In the first place it is well to re- 
member, both in reference to this 
and to other grounds of complaint, 
that they originate in particular in- 
stances, and while such instances 
are much bruited, from the injury 
real or fancied to individuals, the 
evidences of efficiency in the ad- 
ministration of the examining sys- 
tem, rest in official records which 
meet the eyes of comparatively few. 

The official figures which we have 
cited are really evidences of gen- 
eral efficiency of vastly more weight 
than any adverse evidence to be 
derived from the isolated experi- 
ences of individuals, yet the latter 
are more openly noised, and from 
this reason alone receive a degree of 
credit which a moment's considera- 
tion of the other side of the question 
would serve to take from them. 

j^or should it be forgotten how far 
charges of this nature may rest on 
mere opinion, and that, interested 
opinion. Take the case of a prior 
patentee and a present applicant for 
a patent, whose several inventions 
border very closely upon each other, 
all the probabilities are that if the 
opinions of the respective parties 



were taken they would prove dia- 
metrically opposite ; the patentee 
Avould insist on the identity or equiv- 
alency of the two devices, the ap- 
plicant would see a clear difference 
between the two, and instance the 
refusal of a patent to him as a piece 
of rank injustice and stupidity on 
the part of the Office. Each party 
would see and argue in his own in- 
terest. 

ISTor is interest the only cause of 
error in this matter ; it is by no 
means an uncommon incident for 
impartial men, equally expert, to 
differ in their views as to the sub- 
stantial identity and equivalency of 
devices, or as to their patentability. 

This shows that in considering 
this class of complaints, much allow- 
ance is to be made for difference of 
judgment, and with the caution that 
the most interested judgment is not 
the most likely to be correct. 
* Then again, it is a necessary fea- 
ture of the patent law, not so gener- 
ally understood as it should be, that 
changes or additions, be they ever 
so trifling apparently, in existing 
devices, whether patented or not, 
are entitled to letters-patent if they 
involve any degree of invention, to 
be determined mainly by the test of. 
result. / 

Many a patentee discovering that 
some one has patented an improve- 
ment upon his invention, an im- 
provement which no doubt to him 
seems more questionable or trifling 
than it may to others, is filled with 
resentment, first at the presumed 



26 



Ordina/ry Criticisms of the Patent Office Considered. 



poacher upon his fancied domain, 
and next at the Patent Office for 
allowing and indorsing the imagined 
intrusion. This is all wrong, but is 
loudly insisted on, in proportion to 
its wrongfulness. It arises mainly 
from the one grand fallacy, that the 
patent laws are intended, not for 
the benefit of the public at large, 
but for that of inventors in particu- 
lar. *Isror does a patentee thus com- 
plaining usually stop to reflect, 
that, but for the examining system 
he so bitterly accuses, the subse- 
quent patent, in which the fancied 
injury lies, might have embraced 
not only the improvement, but also 
his own invention, thus working a 
substantial mischief, to be abated 
perhaps only by litigation. 

It is complained that many re- 
jections are not for just and suffi- 
cient cause, and that inventors are 
often refused patents for that which 
is patentable. As to this particular 
complaint it is to be observed that 
failures to obtain a patent for that 
which is patentable, cannot be fair- 
ly charged as failure of justice until 
it be shown that every means which 
the examining system provides for 
obtaining his claim has been ex- 
hausted by the inventor in vain. 
This removes from the category of 
cases in point, those in which the 
inventor has not elected to exercise 
his right of appeal from a first or 
second adverse judgment. Thus the 
number of pertinent examples is very 
materially reduced. 

It may be safely asserted that a 



critical and impartial judgment 
would find those cases very few in- 
deed in which a. just claim of inven- 
tion, properly presented and prose- 
cuted as far as possible, has been 
refused. 

But it is further complained that 
improper rejections by stibordinate 
officers drive applicants to the ex- 
pense and delay of appeals, or lead 
to the abandonment of applications, 
or where they do not have one 
of these eflfects, still cause unneces- 
sary expenditure of time and trouble 
in obtaining patents. There is 
truth in this complaint, and we 
shall have occasion to discuss the 
causes of the evil. But our present 
purpose is to point out to those who 
would enter upon a consideration 
of the examining system and its 
administration impartially, certain 
facts and reasons tending greatly to 
diminish the real weight of these 
complaints. 

It is first to be noted that appeals, 
whether justly or unjustly occa- 
sioned, are exceptional. It is a fact 
that the great majority of patents 
issued are allowed by the officers to 
whom the cases are first referred. 
In these instances, presuming the 
inventor to have performed his part 
of the duty by presenting his claim 
in proper and intelligible form, the 
process, expense, and time required 
are in general as simple, moderate, 
and brief as possible. It is a ques- 
tion which we shall have occasion 
to inquire into, whether the extreme 
simplicity and facility do not work 



Ordinary Criticisms of the Patent Office Considered. 



21 



injustice of another kind to the pub- 
he and inventors ; but the alleged 
injustice with which we are now 
dealing is that of expense and 
delay. 

As to abandonment of applica- 
tions, it is to be said, that in most 
cases it is voluntary^ arising either 
from the applicant's ignorance of his 
rights, or from indifference or want 
of energy, in either of which cases 
the fault is his own. It may be ad- 
mitted that the mistakes of exami- 
ners have on rare occasions led to 
the involuntary abandonment of 
just claims. Such cases must be 
exceedingly few, since the fees for 
appeals are so small as to be within 
the command of almost every one. 

As to difficulties being cast in the 
way of obtaining patents by the 
mistakes of officers, there is vastly 
more substance in this branch of 
the complaint than in the other. 
At the same time it is an evil which 
has been greatly exaggerated by the 
natural prejudices of inventors. 

An inventor looking at patents in 
the fallacious light which we have 
been endeavoring to expose and 
controvert, and regarding himself 
as the only party interested in the 
patent laws, satisfied, too, in his 
own mind, with or without inquiry, 
that his invention is new and use- 
ful, and that a patent is his right, 
chafes at what he considers, in Ms 
particular case at least, to be a use- 
less delay. The same man, having 
real estate to sell, would hardly ex- 
pect any one to purchase without 



taking the time to satisfy himself 
upon the question of title. Let him 
reflect then that the public, in grant- 
ing him a patent for his invention, 
does so by way of purchase, and 
that, unless his invention be new 
and useful, he has nothing to sell, 
the public, in providing that its offi- 
cers shall take necessary time and 
proceedings to determine these ques- 
tions before consummating the bar- 
gain, is doing simply what any busi- 
ness man would do in like case. 

It is an important fact to be re- 
membered too, that of the delays 
and expenses incurred through re- 
jections of applications, a very large 
percentage is due to the informal, 
imperfect, and unskilful preparation 
and presentation of such applica- 
tions by inventors or their repre- 
sentatives. This is a fruitful cause 
of difficulty of which little is heard 
for very obvious reasons ; it is a cause 
likely to be overlooked, or at least 
not openly acknowledged by the 
parties to whom it is due. 

It is the prevalent error in these 
complaints of expense and delaj^, 
that they are directed against the 
Patent Office indiscriminately, with- 
out perception of, or reference to, 
their true causes. Occurring in the 
Office, they are charged to the Office ; 
and to this not only the natural im- 
patience of inventors leads, but the 
conceit or the lack of candor" of 
many of a large body of professional 
men. 

This is not to be wondered at 
while there is among so large a pro- 



28 



Actual Defects of the Patent Office and the Remedy. 



portion of inventors, a one-sided and 
partial understanding of the nature 
and object of tlie patent laws. 

This leads them to measure the 
justice and efficiency of the admin- 
istration of the laws solely by the ease 
and readiness with which patents are 
allowed, a test so obviously wrong, 
that nothing more need be said 
about it. 

That this should be the case with 
inventors is not perhaps to be won- 
dered at, but it is a somewhat 
astonishing and discreditable fact, 
that this false sentiment is echoed 
and encouraged by some of those 
whose profession it is to make and 
prosecute the applications of inven- 
tors. 

That- an inventor should find in 
every unexpected lapse of time or 
dollar of expense incurred in the at- 
tainment of his wishes an instance 
of i^ersonal injmy and a cause of 
complaint is not unnatural, but for 
a man, whose profession should be- 
speak a fair understanding of the 
law, and a cool judgment, to adopt 
or to counterfeit the like hot-headed, 
misjudging impatience, speaks little 
for his capacity or his candor. 

While thus contending that the 
class of complaints with which we 
have been dealing, have received a 
degree of weight and credit, to 
which they are by no means enti- 
tled, we would not be understood as 
denying that there have been some 
just grounds for such complaints. 

Such legitimate causes, though 
on examination they will be found 



to be infinitely fewer than may be 
commonl}^ supposed, are yet more 
numerous than need be, and while 
they do not serve to point the ex- 
travagant arguments which have 
been based upon them, they do serve 
to indicate very possible improve- 
ments of administration. 

CHAPTEE yil. 

ACTUAL DEFECTS OF THE PRESENT 
ORGAKIZATION OF THE PATENT 
OFFICE AND THE REMEDY. 

Having seen how strongly the 
ordinary criticism of the adminis- 
tration of the examining system is 
from the very nature of things 
tinctured by interest and mistaken 
prejudice, and how much of it 
is based upon opinion, not al- 
ways the most competent or im- 
partial, let us next see what evils 
the most impartial inquiry will be 
disposed to allow, either as exist- 
ing or as threatening, and inquire 
whether they are of such a nature, 
and so mischievous that their exist- 
ence or probability presents a fair 
argument against the wisdom of 
the system. 

The object of the system, as we 
have seen, is to ascertain at a time 
most advantageous to the public 
and to the inventor, that is, before 
a patent is granted, whether the 
subject sought to be patented is 
legally patentable. 

The questions to be looked into 
may be stated generally as the 



Actual Defects of the Patent Office and the Remedy. 



29 



novelty and utility of the invention, 
but these embrace a variety of ques- 
tions, requiring for their proper 
solution, experienced and sound 
judgment. 

The most obvious labor which the 
system involves is that of research ; 
for the thorough and impartial per- 
formance of this duty, it will not be 
denied, an organization like that 
of the Patent Office is most admira- 
bl}^ adapted. 

It is in the assumption of this 
dut}' by the public through its 
designated officers, that the real be- 
nevolence of the examining system 
is most strikingly apparent ; for 
inventors individually to make the 
researches necessary to determine 
with any degree of satisfaction 
whether their inventions are new or 
old, would in most cases be utterly 
impracticable, and could not be at- 
tempted save at enormous cost of 
time and money. In applying the 
moderate fees asked of apj)licants 
for patents to the collection and 
compact and sj'stematic arrange- 
ment of the means for readily 
making these researches, and to 
the paj-ment of a sufficient number 
of officers to make them, when it is 
most to the advantage of inventors 
that they should be made, the law 
proceeds upon principles of true 
liberality and justice. 

But the proper application of these 
researches involves judgment upon 
matters of diverse natures, requir- 
ing for their consideration different 
kinds of knowledge and experience. 



The question of novelty is not 
one merely of the apparent similar- 
ity or diversity of things in matter 
of form or constituent parts or oper- 
ation, it is not a question addressed 
merely to the eye or ear. 

The questions of novelty and 
utility are naturally blended thus 
far, that inventions are really new 
inventions, entitUng their inventors 
to be treated as producers to the 
public stock, only when useful in 
the sense of availability to some 
beneficial end. 

It therefore often becomes a mat- 
ter for nice discrimination and judg- 
ment to determine whether the 
points of apparent difference be- 
tween one device and another in- 
volve this utihty, and so go to con- 
stitute patentable novelty, or wheth- 
er they are mere barren changes of 
no effect. 

And apart from its bearing upon 
the question of novelty, that of util- 
ity is in itself, one for the intelligent 
consideration of which a high de- 
gree of knowledge and discretion is 
often required. 

Then as the law has specified dif- 
ferent classes of patentable subject- 
matter, it frequently becomes ne- 
cessary to decide under which of 
them, a particular invention is pro- 
perly to be classed, and whether 
therefore it is or is not patentable 
as described and claimed by the ap- 
plicant. 

And as the first inventor only of 
a new and useful device is entitled 
to a patent, the questions to be de 



30 



Actual Defects of the Patent Office and the Remedy. 



cided in the Patent Office are not 
only those which in every case exist 
between claimants and the public, 
but those also which frequently arise 
between different claimants of the 
same invention. These are judicial 
questions requiring for their proper 
determination a knowledge of gen- 
eral and of patent law. 

The various questions then, which 
necessarily arise in the administra- 
tion of an examining system, require 
the union within the Office of differ- 
ent capacities and accomplishments ; 
there must be diligent research, 
there must be capacity to judge upon 
questions of fact touching matter in 
the various practical arts, and there 
must be capacity correctly to apply 
the law to the various states of fact. 

Applications for letters-patent are 
very nmiierous, they relate to many 
different branches of art, and in 
their consideration, as we have seen, 
many questions of diverse kinds 
arise. 

For the administration thei'efore 
of the examining system, an exten- 
sive organization is required em- 
bracing many officials. 

Now the evils likely to arise in 
such a state of affairs will readily 
suggest themselves ; they are the 
dangers incident to any organiza- 
tion embracing various classes of 
duties, the proper performance of 
some of which requires that they 
should concentrate in the hands of 
a few, of others that they should be 
divided among many. 

An improper division of labor 



without due regard to the capacities 
required for its proper performance ; 
the intrusting of that to many which 
cou.ld be more satisfactorily per- 
formed by a few ; the improper con- 
junction of opposite duties, some 
executory, others discretionary and 
judicial, some requiring chiefly time 
and diligence, others requiring spe- 
cial knowledge and capacity, and 
the too general dispersal of impor- 
tant powers. 

Such mischiefs as these are likely, 
if not carefully provided against, to 
creep into any such organization, 
and to cause conflicts, confusion, 
and lack of uniformity, exposing the 
whole structure to the charge of 
cumbrousness and inefficiency. 

Into such mischiefs and its con- 
sequent accusation has the Patent 
Office in fact, to some extent, justly 
fallen. 

In looking for the cause of this 
we may proceed upon the principle, 
heretofore indicated, that the labor 
of the Patent Office is of two kinds, 
one calling for intelligent research, 
the other for judgment. 

The chief requisites for the proper 
performance of the first class are 
time, diligence, and division of labor; 
for the second, the wants are learn- 
ing and capacity, and so far as pos- 
sible, concentration of authority. 
Division, so far from being a neces- 
sity here, is a grave objection, and 
for the evident reason, that in mat- 
ters of judgment aftecting important 
interests the desiderata are certainty 
and um'forynUy. 



Actual Defects of the Patent Office and the Remedy. 



31 



Any one aware of the present 
constitution of the Patent Office will 
admit that these principles have not 
in practice been recognized to that 
extent which the law originally con- 
templated. 

In the early days of the Patent 
Office, when inventions were com- 
paratively few, the labor and au- 
thority were placed in the hands of 
one or two men. The demand on 
the Office grew more rapidly than 
had been anticipated, and the ne- 
cessity for a division of labor be- 
came apparent. It was a natural 
though a mischievous result, that 
with the division of labor there was 
also a division of authority, which 
necessarily resulted in a want of uni- 
formity in the practice of the Office. 

In 1855, Judge Mason, then Com- 
missioner of Patents, perceived the 
difficulties which had even then, 
when there were but twelve princi- 
pal examiners, arisen from this sub- 
division of independent judicial ac- 
tion. The judge said, in his report, 
" There are very grave objections to 
a further increase of the number of 
principal examiners. Tlie system 
has already overgrown in that re- 
spect, and seems almost impera- 
tively to demand some modification 
to give it a proper harmony and 
uniformity of action. They (the 
examiners) act to a considerable 
extent independently of each other, 
and possessing very different minds 
and views they follow different rules 
of action and decision." 

To-day, we see the duties and the 



powers originally designed to be 
exercised by one man or at least by 
a few men, acting in conjunction^ 
divided among more than a score 
of officers acting independently of 
each other, and what is worse, to 
a great degree independently of 
the really responsible power of the 
Office. 

It is here that the evil lies, and 
the parties injured are not merely 
those from whom the loudest cries 
of injury are heard, not those im- 
patient men who measure the jus- 
tice and efficacy of the system by 
the ease and readiness with which 
the Office may coincide with their 
views and gratify their wishes, but 
the public, and those patentees whose 
interests — measured by the value of 
their contributions to the practical 
arts — are of great weight. 

To the rights or presumed rights 
of applicants, the power of appeal 
gives ample protection against the 
adverse action of any of the score of 
examiners, but the rights of the 
public and those of prior patentees 
have no such protection. 

Yet there can be no doulDt that 
this defect in the organization of 
the Patent Office is really also of 
serious injury to applicants for 
patents. While it does not neces- 
sarily tend to ultimate and perma- 
nent injustice, it certainly does 
tend to vexatious trouble and delay, 
in themselves grave injustice. 

Plainly the existence of a large 
number of nominally subordinate 
but in effect independent officers. 



32 



Actual Defects of the Patent Office and the Remedy. 



each one of them uniting in himself 
executive and judicial functions, 
and this without that direct respon- 
sibility which should attach to such 
functions — officers Avhose actions are 
to a great extent uncontrolled by 
the authority with wliom is placed 
the res]5onsibility for the proper ad- 
ministration of the law — presents an 
anomalous and mischievous state of 
affairs. Every officer may consti- 
tute a little court of his own, and 
may adopt his own maxims of law 
and of practice, and it will be a 
marvel in the history of human na- 
ture if the disposition to do this is 
not in an inverse ratio to the real 
capacity and responsibility of the 
man. 

This is an evil fruitful of doubt 
and delay, needlessly embarrassing 
inventors in the presentation and 
prosecution of their claims, provoc- 
ative of prejudice and irregular 
practice, and it is an evil of which 
in the present organization of the 
Office, there is constantly increas- 
ing danger. Fortunately, as a rule, 
the officers of the Patent Office 
have, considering the temptation 
and the opportunity, been signally 
free from dangerous assumptions of 
authority. 

Far from attributing the want of 
uniformity in the action of the Pat- 
ent Office, and the evils resulting 
therefrom, to the officers of that 
Bureau personally, we should be 
doing an injustice to many accom- 
plished gentlemen who have occu- 
pied, or who now occupy, the re- 



sponsible position of Examiner, if 
we failed to record our opinion that 
the degree of uniformity of action 
is, considering the circumstances, 
somewhat astonishing, and may be 
charged to the good sense and abil- 
ity of these officers as a rule, and to 
their observance of the instructions 
derived during the last few years 
from able heads of the Office. 

True there have been, and will 
probably continue to be, examiners 
with perverted ideas ; men Avho con- 
sider they are best performing their 
duties by presenting every obstruc- 
tion to the grant of patents by 
technical objections and trifling ac- 
tions ; others again, who will manu- 
facture patent law of theii* own, 
and others who tlixough a spirit of 
display will apply theoretical dog- 
mas derived from collegiate cram- 
ming in cases where practical knowl- 
edge and common sense would be a 
much more available means of ar- 
riving at a correct j udgment. These 
officers are the exception, but the 
mischief they have caused, and con- 
tinue to cause, is great, so great 
as to reflect more or less odium on 
the whole examining corps, so that 
the many intelligent officers have 
had to bear the brunt of objec- 
tions attributable to the freaks of 
the few. 

Undoubtedly this division of power 
has worked great mischief to appli- 
cants for patents, and for the same 
reasons that it has worked still 
greater mischiefs to the public 
and to patentees. It creates too 



Actual Defects of the Patent Office and the Remedy. 



33 



many irresponsible judges, and 
unites too various functions in the 
same oflfieers without due reference 
to the various capacity and knowl- 
edge required. The nature of the 
resulting mischief varies with the 
character of the officers, the ten- 
dency of whose errors will he in 
some cases to grant patents which 
should not be granted, in others to 
withhold them when they should 
be granted, and thus action will be- 
come regulated rather by personal 
character and whim, than by any 
fixed and clear principles. 

This will all the more be the ten- 
dency because the powers which 
these oflicers separately exercise are 
of a nature requiring for their proper 
exercise a union of capacities and 
attainments not commonly found in 
one mind. The questions of fact, 
and of mixed fact and law, con- 
stantly coming u]3 for consideration, 
call both for scientific and practical, 
and for legal knowledge and judg- 
ment. It is in the latter branch 
that the examiners are most likely 
to be deficient, as their selection is 
supposed to be governed by their 
presumed knowledge in the various 
branches of the practical arts. 

Legal reasoning is not to be ex- 
pected from those not grounded in 
legal principles ; and there is no 
branch of the law admitting of 
more refined and subtle distinctions, 
requiring a more delicate and skil- 
ful handling than that relating to 
patents. "Patents," said Judge 
Story, "are the very metaphysics 



of the law." It is not one of the 
least alarming signs of the system 
as now conducted, that the applica- 
tion of the law to a subject so deli- 
cate and so important as that of in- 
vention, is so largely left to a number 
of men of whom many will have no 
better guide in their attempted ap- 
plication of judicial doctrine than 
the letter of Law Eej)orts, whose 
spirit they cannot grasp. 

The necessary union of qualifica- 
tions is not likely to be found in 
each one of more than a score of 
men. 

But even suppose that this end 
could be accomplished, still the pres- 
ent organization of the Oflice would 
be defective ; for where there is not 
coaction there cannot be unanimity, 
and esi^ecially in regard to a subject 
where so much difference of opinion 
may arise among the most expert 
and intelligent minds. 

But is the evil incapable of remedy 
or avoidance ? The nature of the 
remedy is indicated by the nature 
of the evil ; but there may be those 
who will doubt the feasibility of 
applying the remedy. A return to 
the original constitution of the Of- 
fice is of course impossible, but 
surely a return to original princi- 
ples is not. If the duty of research, 
requiring time and diligence, were 
more completely separated than now 
rom that of judgment, which re- 
quires rather knowledge and tact, the 
result would be a more satisfactory 
performance of both duties. United 
in the same hands, the two duties 



34 



Benefits of an Examining System. 



become a mutual embarrassment ; 
they are diverse in nature, call for 
different kinds and degrees of men- 
tal capacities and attainments, and 
lie who may most satisfactorily per- 
form the one may be most unfitted 
for the other. For the labor of re- 
search, that which requires time 
and numbers, the present organiza- 
tion of the Office, with its very com- 
plete subdivisions, is perhaps as 
good as could be devised, and its 
efficiency would be greatly increased 
by the more complete separation of 
this class of labor from the other. 

And as for what may be termed 
the judicial part of the duty, plainly 
it could be more speedily and satis- 
factorily performed by a few men 
acting in union, and having laid 
before them the evidence upon 
which they are to form their judg- 
ment, than it can possibly be by a 
much larger number of men acting 
independently and having with the 
duty of judging that also of looking 
up the evidence. The responsibility 
which attaches to judgment would 
in this way rest with a small body 
of men, selected for their capacity, 
acting in union, and not diverted 
from the efficient performance of 
their duties by labor which could as 
well be performed by another class 
of officers. Thus the practice of the 
Office would be more thorough, more 
efficient, and more uniform. 

It is not our purpose to suggest 
the legislation which may be re- 
quired, or the details of a mode, for 
working this desirable change. We 



have simply undertaken to point 
out wherein the real evils of the or- 
ganization as it now is, exist and 
have their origin, and the prin- 
ciples which it would seem should 
govern any endeavor to remedy and 
obviate such evils. 

The perfect feasibility of carrying 
out these principles will hardly be 
disputed, but what legislation and 
what changes would best carry them 
out, is a matter in which there may 
well be diversity of opinion. 

"We have only to add that the pres- 
ent accomplished head of the Office, 
from whom we have received valu- 
able information, has every faith in 
the perfect feasibility and absolute 
necessity of carrying out these princi- 
ples, and his opportunities of judg- 
ing of the want of uniformity of 
action, together with his past able 
administration of the Office, point to 
him as the one most able to judge 
as to what legislation may be re- 
quired to correct an evil which, if 
permitted to grow, must eventually 
undermine our Patent System. 

CHAPTER VIII. 

BENEFITS OF AN EXAMINING 

SYSTEM. 

While recognizing the defects in 
the present organization of the Pat- 
ent Office, and the evils which have 
ensued from them, and which are 
likely to grow unless speedily check- 
ed, we are not of those who discover 
in the past history of the organi- 
zation any such traces of inherent 



Benefits of an Examining System. 



35 



mischief as serve to indicate im- 
practicability in an examining sys- 
tem. 

On the contrary we contend that 
the past administration of tlie ex- 
amining system lias been productive 
of good, entirely outweighing the 
e-vdl. 

We have adduced certain official 
figures which show that in the 
year 1870 to a little more than 
19,000 apphcations made, the num- 
ber rejected was nearly 5000. 

Kow supposing that but one- 
third even of these rejections were on 
proper grounds, or need have been 
acquiesced in by the applicant, what 
saving of time, and money, and la- 
bor, that might otherwise have been 
thrown away in fruitless enterprise 
or litigation, do more than fifteen 
hundred rightfully rejected cases in 
the course of one year represent ; 
what value in protection to. the re- 
spectability and consequent value 
of patent property in general, is 
represented by the withholding in 
one year of fifteen hundred patents, 
which, granted, would not have 
been worth the paper on which they 
were printed. 

These are points which are apt 
to escape consideration, yet when 
brought to mind they are very sug- 
gestive. 

Then turn to another effect of the 
examining system, defectively ad- 
ministered as it may he ; we allude 
to what may be termed its advisory 
and restraining effect. * lo is the 
very clear interest of inventors to 



claim all that they imagine them- 
selves entitled to,» and this is ex- 
ceedingly likely to be more than in 
fact they are entitled to. Claims 
often include with that which is 
new, that also which is old, and 
either public property or the prop- 
erty of some prior ijatentee. Ko can- 
did man, having experience in these 
matters, will deny that the admin- 
istration of the examining system 
has worked almost incalculable 
good to applicants, to patentees, and 
to the public, in pointing out and 
checking these unwitting or deliber- 
ate intrusions upon public or appro- 
priated ground, and indicating the 
real bounds of invention. This 
service has i^rotected the interests 
of many a patentee, has thrown 
much needed light upon many an 
inventor's path, has tempered his 
too buoyant anticipations before 
they had led him into expenditures 
and enterprises, which blindly pur- 
sued, would have resulted in com- 
plications, loss, and bitter disap- 
pointment, and in every such sav- 
ing to inventors is reflected a sav- 
ing to the public. 

And there is still another benefit 
necessarily proceeding from exam- 
ination, a benefit of such import- 
ance that it might in itself be deem- 
ed an offset to many mischiefs. 
We refer to 'the necessity for clear 
and full specifications, and precise 
claims. 

The scrutiny which, in examina- 
tion, descriptions and claims un- 
dergo, must act as an effectual curb 



36 



Benefits of an Examining System. 



upon carelessness, duplicity, and 
vagueness in their preparation. An 
apiDlicant must, in his own interest, 
be frank and precise in Ms state- 
ments, and thus a general correct- 
ness is engendered, the importance 
of which to public and private in- 
terests cannot be overestimated. 
There cannot be in American pat- 
ents that indefiniteness or vague 
generality of description and claim 
which is so conspicuous tin many 
foreign patents, and which at once 
requires litigation to unravel, and 
renders litigation tedious, expen- 
sive, and unsatisfactory. 

And who can estimate the value 
of the Patent Office records, under 
the examining system, in respect to j 
the light which they serve to throw 
on the legal status and the commer- 
cial value of patents ? Upon every 
patent issued, the record of the ap- 
plication, of the rejections it may 
have met, the reasons for these re- 
jections, the references given to prior 
inventions, forms a compact com- 
mentary, which, while at times it 
may only show how singularly 
at fault the official judgment has 
been, is yet calculated to be of in- 
valuable service in aiding and guid- 
ing those who may desire to judge 
for themselves to what extent the 
value of a patent is affected by what 
has gone before. 

Nor will it escape the notice of 
the impartial critic that the admin- 
istration of the examining system, 
with all its imperfections and short- 
comings, has done very mucii to 



give to patents, as was intended, a 
higher legal and commercial status 
than they have in any other coun- 
try. That is certain, which can be 
made certain, and every aid to ar- 
riving at certainty is of moment. 
How much of that all -important ele- 
ment, certainty, must be given to 
patent property by the means of ar- 
riving at it which the Office records 
furnish ! 

There can be no doubt that the 
moral weight, the weight of pre- 
sumption which letters-patent here 
carry with them into the courts, 
and among that portion of the pub- 
lic who have any understanding of 
the Patent System, has done very 
much, not only to simplify and 
economize, but to cut off litigation 
by inspiring confidence on the side 
of right, and caution upon that of 
wrong. 

Kor has this moral power as we 
may term it, of patent property, de- 
creased, as, if the administration of 
the examining system were on the 
whole a failure, it must have done, 
in proportion to the marvellous in- 
crease in the quantity of such prop- 
erty existing, although it has 
doubtless fluctuated with the ap- 
parent competence and honesty, or 
their opiDOsites, in the ruling powers 
at the Patent Office. 

The Patent Office is a very exten- 
sive institution, m which is collected 
a vast amount of material, rapidly 
augmented by constant accessions. 
This fact has led many to regard 
the oroanization as one which if 



The Exainining System as Vieioed from Ahroad. 



3^ 



not alreadj^ cumbrous and unwieldy, 
must speedilj' become so, and alarm- 
ing pictures have been given of the 
tremendous accretions of matter. 
It is asked how is it possible for 
men to conduct searches with speed 
and certainty amidst such records. 
Much has already been done to 
solve the question, by division of 
material and labor, by reducmg the 
records to compact and accessible 
shape, and by elaborate classifica- 
tion, and no doubt experience will 
suggest further improvements in this 
direction. There is in truth no 
organization so large or complex, 
that a spirit of system and order 
cannot mould it into a simple and 
smoothly working unit. When 
the same correct principles have 
been applied to the arrangement of 
duties which have already worked 
such wonders in the arrangement 
of material, the Patent Office will 
become an example of efficiency and 
order and uniformity of action. 

CHAPTEE IX. 

THE EXAMESrrN'G STSTEM AS 
VIEWED FROM ABROAD. 

"While upon the subject of an ex- 
amining system it will not be out of 
place to see how it is regarded 
abroad, since the foreign views of 
the subject have been largely gov- 
erned by observance or report of the 
effect of the system as administered 
in this country. 

We have already had occasion to 
refer to some of the iDeculiarities and 



defects of the English Patent Sys- 
tem, which have recently attracted 
great attention. The subject has 
been much discussed both in and 
out of Parliament, and committees 
of inquiry have had l^efore them the 
testimony of many j)rominent men, 
whose position, in respect to the 
practical arts, or whose legal attain- 
ment entitle their opinions to great 
consideration. 

The defects of the present English 
system are generally acknowledged, 
and seem to have divided those tak- 
ing part in the discussion into two 
parties : 1. Those who would abol- 
ish patents altogether, and 2. Those 
who, favoring patents, jet perceiv- 
ing the deficiency of the present 
laws, proposed a variety of remedial 
measures. 

Of the former parties the number 
is not large, nor the reasoning such 
as to carry any weight with it. 

Apart from the great cost of pat- 
ents, the one great deficiency of the 
law, admitted on all sides, lies in the 
practically indiscriminate and un- 
controlled issue of patents, which 
leaves bond fide inventors at the 
mercy, to a great extent, of unscru- 
l^ulous pirates, and opens the door 
to patents for merely pretended in- 
ventions, or for absurd and imprac- 
ticable schemes, and of patents with 
insufficient, vague, and deceitful 
specifications and claims. Still 
AYorse, — there is no check upon the 
repeated patenting of sunilar inven- 
tions , and the rights of patentees 
are left in a cloud of darkness which 



38 



The Examining System as Viewed from Abroad. 



litigation alone can break ; this last 
evil being aggravated by insuflficient 
means for trying patent causes. 

The various remedies proposed 
agree in this, — that they all point to 
some mode of controlling the issue 
of patents, and the establishment of 
some special tribunal to deal with 
patent questions. As to the precise 
mode by which, and the time when, 
the ends aimed at should be at- 
tained, there seems to have been 
some difference of opinion. 

Of course in a discussion of this 
kind our examining system did not 
escape attention, and its merits and 
defects, real or supposed, were freely 
canvassed. 

It is worthy of note, however, that 
those who advocated the adoption 
in England of a system more or less 
analogous were men whose opinions 
were entitled to the greater weight, 
as they spoke from personal obser- 
vation and experience. 

Among these was Mr. Aston, a 
prominent barrister, who, after can- 
vassing the defects of the English 
law, proceeds to suggest certain 
remedies ; and speaking of them as 
bemg not merely speculative, but 
such as had been tried, thus re- 
marks : "Those to which I attach 
the most importance have been fully 
tried in the United States of Amer- 
ica, and found to work well. I mean 
the exercise of discrimination in the 
grant of jjaienis, and what is still 
more important, the deposit he- 
fore a patent is granted of a 2J"i'e- 
cise description of the incentlon and 



claims, given in a complete specifi- 
cation, which is submitted to a 
proper official examination before 
it is passed as sufficient. My own 
opinions upon the working of the 
American Patent Laws are founded 
upon a personal investigation of the 
system adopted in the United States, 
and from continued experience gath- 
ered in professional practice. My 
conviction is that the American sys- 
tem, though it has its imperfections, 
does work better than ours, and that 
because it has cured in a great meas- 
ure the defects under which our sys- 
tem is still laboring.'''' 

Mr. J. Howard, an inventor, man- 
ufacturer, and a Member of Parlia- 
ment, while replying to the argument 
of those who would abolish patents 
altogether, remarked, that it ap- 
peared to him, that most of the ar- 
guments that had been urged did 
not touch the principles of a patent 
law, but went rather to the defects of 
the existing law and its admmistra- 
tion. Mr. Howard took occasion to 
allude to the great and favorable im- 
pression which had been made on his 
mind by a visit to the United States 
Patent Office. He referred to the 
vital necessity for amendments in 
the English law, and expressed the 
hope that when the subject was 
taken in hand by the law officers of 
the Crown, they woidd provide the 
means for a bona fide examination of 
all inventions before pjatents were 
granted; and also provide that the 
specification should be so clear that 
the public may knoio what really the 



The Examining System as Viewed from Abroad. 



39 



patent loas granted for, and thus save 
the ruinous cost of legal proceedings. 

Lord Romilly , Master of the Eolls, 
while among those iuchued to the 
aboUtiou of patents, on the theory 
that they had httle to do with the 
progress of art and civilization, sug- 
gested as a remedy for the jDresent 
inefficient state of the laws, " the ap- 
pointment of a special tribvmal of 
thoroughly efficient men, who should 
examine and pronounce upon all 
applications for patents, and grant 
them according as they might think 
the invention new and useful ; or 
withhold them if the application 
was for what was trivial, worthless, 
injurious, or not new." 

Still another advocate for the 
adoption in England of an examin- 
ing sj'stem analogous to oiu'S was 
found in the person of Mr. Mundella, 
himself a manufacturer of wide re- 
pute, and who has been a visitor in 
this country. 

Of course argument against the 
adoption of such a system was not 
wanting. Reference was made to re- 
marks proceeding, it would api^ear, 
some time ago, from Mr. Woodcroft, 
the accomplished Chief Clerk of the 
English Patent Office, whose invalu- 
able services in superintending the 
publications of that office have gain- 
ed him a well-earned repute. But Mr. 
Woodcroffs objections to an exam- 
ining system seem to have been 
singularly unhapx^y in the supposed 
facts upon which they are based. 

Said Mr. Woodcroft, " The Amer- 
icans pay about £23,000 a year for 



preliminary examination, and they 
are very much dissatisfied with it. 
The system of px'eliminary examina- 
tion has been tried and found want- 
ing. It is in operation in Prussia, 
but does not give satisfaction. It 
was tried in France, Austria, Sar- 
dinia, and Belgium, but being most 
unsatisfactory, was abandoned in 
each country. It is now going on 
in America at an enormous expense, 
and the Chief Commissioner (?) 
wrote to me to say that it was a very 
inadequate system, and a very "un- 
fair one." 

These remarks of Mr. AVoodcroft's 
have been frequently quoted by op- 
ponents of the American examining 
system, and much greater impor- 
tance has been attached abroad to 
the dictum of an ex-officer of our 
Patent Office, who is styled a Chief 
Commissioner, than we should be 
wilhng to accord to it here in view 
of the overwhelming opinions of our 
best authorities in favor of an ex- 
amining system. 

But we find Mr. Woodcroft, at a 
more recent date, saying : " Let 
every man have his patent, but be- 
fore action is brought let the origi- 
nality of the claim of the invention 
be sifted by the most competent men 
of the day," a theory to which we 
shall have occasion to refer to here- 
after. 

That in Prussia the system should 
have been a failure, no one will won- 
der when he reads the testimony of 
Mr. Bessemer, who speaks from ex- 
perience of the honesty and benevo- 



40 



The Examining System as Viewed from Abroad. 



lence of the working of the Prussian 
system, in regard to foreigners at 
least. Mr. Bessemer says that he 
did not take out a patent for his in- 
vention in Prussia, and explains the 
reason thus : " He sent his paper to 
Prussia in the care of Mr. Krupp, 
who paid him £5000 for the use of 
his patent. He applied in due 
course for a patent, and was in- 
formed by the Prussian Patent 
Office that the invention was not 
new. The Prussian Patent Office 
grant occasional patents ; they take 
the fees and the drawings from 
British inventors in any case, and 
afterwards publish them for the 
benefit of Prussia. The Office said 
that Mr. Nasmyth was the inventor 
of the process ; Mr. JSTasmyth said 
he was not. They next said they 
would give the name of the real 
man in a few days. Six weeks 
passed, and they said, ' If we don't 
find the name of the real man to- 
morrow, we will give you a patent. ' 
A week of these to-morrows passed, 
after which they showed an English 
hlne-hook with his own invention pub- 
lished in it, and they said, ' Your 
invention is published, so according 
to the law of Prussia we cannot grant 
you a patent.'' All the time they 
had been promising to grant it. 
The process is now worked very 
largely in Prussia." 

It is to be hoped indeed that this 
was an extreme case in the working 
of the Prussian system, but it is a 
well-known fact that that system is 
utterly arbitrary both as to end and 



means, which is to say that it is nec- 
essarily and essentially a failure. 

The example of Prussia, then, 
was a singularly unhappy and in- 
applicable argument against the 
adoption of a system of examination 
suited to a free country. 

As to the failure of examining 
systems in France, Augtria, Sar- 
dinia, and Belgium, in the absence 
of express information as to princi- 
ples and details, the means adopted 
for carrying them out, or the extent 
of trial given them, it is not of course 
possible to examine into the causes 
of failure, but it would doubtless be 
found in the existence of some ar- 
bitrary features in either end or 
mode. 

Eeturning to Mr. Woodcroft's 
theory, it will be seen that he is not 
opposed to an examining system, 
but to our system of examination vix 
advance of the grant ; he would 
grant any man a patent for any- 
thing, but before the patentee could 
exercise any rights against infringers 
of his patent, the latter must be sub- 
mitted to the scrutiny of the '■'■Tnost 
competent men of the day.'''' If an 
examination is to be made, why 
should it not be in advance of the 
grant, so that the deed itself may be 
lorima facie evidence of the paten- 
tee's rights ? Why should one 
branch of the government indiscrim- 
inately grant patents for another 
branch to scrutinize before the pat- 
entees can go into court, or can 
go before the public with any ascer- 
tained rights ? Why postpone lock- 



The Examining System as Vieived from Abroad. 



41 



ing the stable door till after the 
horse is out ? 

Curiously enough, ideas somewhat 
similar to Mr. Woodcroft's have 
prevailed, but to a very Umited ex- 
tent, in this country. 

It has been proposed to continue 
an examining system, and if the 
Office refuses a patent to let the ap- 
jplicant take one on his own respon- 
sibility, the patent however to be 
accompanied Avith the taint of offi- 
cial refusal. 

Of what earthly use would such 
a patent be to the holder, who would 
be in a position analogous to that of 
the man who bases his ownership to 
real estate on a deed either invalid 
on its face, or bearing such a taint 
that it is worthless ? 

Argmnent against the American 
system was also found in an article 
coining at secondhand from the 
columns of the "New York Trib- 
une," quoted in other papers, both 
here and abroad. 

This was the article to which we 
have had occasion to refer in an 
earlier part of this treatise as show- 
ing such an entire and singular 
misapprehension of the true prin- 
ciples of our system. The article 
animadverts upon the dangerous 
power exercised by our officials in 
pronouncing upon the novelty and 
VALUE of inventions; — "Power," 
says the article, "which the best 
functionaries might abuse through 
defect of information, or error in 
judgment, which the worst certainly 
will and do use most unrighteously. ' ' 



That the law does not authorize 
inquiry into the value of inventions, 
we have shown, and as to the in- 
quiry into novelty, is not the exer- 
cise of power in this respect suffici- 
ently prevented, by the very nature 
of the inquiry, by the rights of the 
applicant to full information as to 
any cause of rejection, and by his 
right of appeal, from being improp- 
erly and unjustly exercised ? 

"What must have been the sm:- 
prise of those Englishmen who so 
keenly appreciated the evils of their 
patent system that they desired any 
mode of getting rid of it, even by 
the total abolition of patents, if no 
other way could be devised, to find 
this article gravely arguing that 
' ' our patent laws should be assim- 
ilated to the British ; that the Pat- 
ent Office should here, as there, 
simply register claims to have made 
inventions or discoveries in their 
order, and all questions thence aris- 
ing should be taken to the courts 
and there settled." 

Such a proposition as this must 
have given rise to the thought that 
the American examining system 
must be bad indeed, if it warrants 
the presenting to American in- 
ventors of this alternative as pref- 
erable. 

The delightful results as they 
have been experienced in England, 
of treating property in invention as 
a bone to be carried off in triumph 
by the lucky winner among those 
who choose to fight for it, may be 
gathered from the testimony of Mr. 



42 



The Examining System as Viewed from Abroad. 



Nasniyth, the well-known inventor 
of the steam-hammer. "He had 
been called as a witness in patent 
cases, and had seen much of the ad- 
vantages and disadvantages of pat- 
ent litigation. He thought there 
was a natural tendency to partisan- 
ship among scientific witnesses, and 
had felt this tendency to become an 
advocate rather than a witness. 
His steam hammer had been in- 
fringed, but he took a commercial 
view of the matter. He had seen 
so much of the enormous expense of 
litigation that he had always resolved 
to suhmit to any infringement rather 
than fight a battle at law.'''' 

Mr. Webster, a prominent barris- 
ter, characterized patent litigation 
as "nothing but speculations on the 
part of the litigants on the ignorance 
of the judge and jury ; a jury is often 
very ignorant, and a judge more ig- 
norant than all of them. " 

Other prominent and experienced 
men testified to like effect. 

"When we take into consideration 
the ambiguous character of many 
English patents, and the absence of 
definite claims, the ignorance of 
judges and juries is not much to be 
wondered at. In this country, how- 
ever, a well-defined claim is de- 
manded before the patent can issue; 
and in litigated cases the matters 
to be adjudicated on come before 
the courts in such a shape that the 
judges, assisted by intelligent wit- 
nesses, are very rarely at a loss to 
understand the invention. 

Patent litigation in this country 



is not so costly, nor so unsatisfac- 
tory, as in England, and this fact 
may be very largely attributed to the 
eJ9fect of our examining system, in 
reducing and simplifying the ques- 
tions coming before the courts. But 
evils, like in kind if not in degree, 
attend such litigation here, neces- 
sary evils where judges are called 
amidst other duties to deal with a va- 
riety of mechanical subjects, of which 
it is not to be expected that they 
have personal knowledge, so that 
they must arrive at their conclusions 
by such light as the adverse argu- 
ment of counsel and testimony of 
experts may throw on the matter. 

There is, perhaps, more patent 
litigation in this country than in 
England, as there are also very 
many more patents, the annual 
number of patents granted being 
not less than five times more nu- 
merous. But it may be gathered 
from the testimony of Mr. Nasmyth 
and of others, that m England pat- 
ent litigation is governed not at all 
by the number of patents, but by 
the wealth and courage of patentees. 
There is likely to be little litigation 
when it is so expensive as to task 
the purse of a rich man, and so un- 
certain that both poor and rich are 
likely to prefer quiet submission to 
injustice rather than resort to the 
courts. It is the characteristic of the 
English patent system, to the known 
evils of which the sage newspaper 
article we have quoted would have 
us flee from the imaginary evils of 
our own, that in leaving the validity 



Tlie Exaniiniyig System as Viewed from Abroad. 



43 



of a patent, as a title-deed, an open 
question upon which litigation alone 
can throw any light, it makes litiga- 
tion so terrible an ordeal, that soon- 
er than invite it, most ordinaiy 
mortals would be content to have 
their rights remain forever unde- 
fined and unrespected. 

We fancy the most inveterate and 
unreasonable grumblers would re- 
gard an exchange of our own for 
this system as a jump out of the fry- 
ing-pan into the fire. 

Patent litigation must always, 
from the very nature of the subject, 
be costly ; the least that can be done 
then, in justice to inventors, is to 
insure that they may enter upon it, 
when necessary, with a tolerable de- 
gree of confidence and certainty, that 
they have something to stand upon. 

One of the remedies proposed by 
those who understand the subject 
best, for the present state of patent 
property in England, is the estab- 
lishment of special tribunals for the 
trial of patent causes, in which the 
judges shall have the assistance of 
impartial experts upon practical sub- 
jects. This, perhaps, is something 
which might be considered to ad- 
vantage here. It certainly holds 
out the prospect of giving patentees 
the benefit of the most intelligent 
and satisfactory adjudication of their 
rights. 

But this is only a secondary 
matter. Among inventors and their 
advisers there must be many who 
will be disposed, in drawing up de- 
scriptions and claims, to adopt the 



maxim that "language was made 
for the concealment of thought," 
and this tendency must be aggra- 
vated if patents are so loosely 
granted, and there is such uncer- 
tainty and risk attending them as 
to lead to a general imxDression that 
vagueness and generality of language 
may be of service in furnishing some 
ground, however small, to stand 
upon. In this way patents become 
an abomination and a snare, both 
to inventors and to the public. 

Such has been the experience in 
England ; the result of allowing 
patents to issue without proper ex- 
amination, without ascertaining whe- 
ther the specifications and claims 
he cZear, precise, and well defined, is 
thus graphically stated by Mr. 
Aston: "Patentees complain that 
they have not sufficient protection 
for their property, and the public 
complain that they cannot defend 
themselves from the patent. There 
are some intelligent patent agents ; 
there are also some who are not so. 
It is very commonly the case that 
an uninformed man goes with his 
invention to an uninformed patent 
agent for assistance ; the patentee in 
the latter case is frequently tempted 
to -put in a very wide claim, or one 
capable of a very wide interpretation. 
He, therefore, does not as a rule find 
out the real value of his title-deed 
till he goes into court with it ; thei-e, 
for the first time, it "undergoes strict 
examination hy the judge on the bench, 
which is an ordeal which very few 
specifications can stand.'''' 



44 



The Examining System as Viewed from Abroad. 



All this gives point to what we 
have said in the preceding chapter 
as to the important beneficial effects 
of our previous examination in com- 
pelling clearness and precision in 
the drawing of specifications and 
claims. 

To overcome these evils, Mr. 
Aston suggested that there should 
be an official examination of the 
document which constitutes the title- 
deed ; he thought that the examiner 
should be a lawyer, assisted by per- 
sons with technical knowledge. 

Mr. Webster, an eminent Queen's 
counsel, says, alluding to the duties 
which the law officers of the Crown 
under the present system, are called 
upon to perform : ' ' The law officers 
do not obtain a sufficient description 
of the nature of inventions in prac- 
tice ; thej^ are not competent to deal 
with such subjects ; they cannot give 
the requisite time, and they know 
nothing abovit mechanical details. 
A law officer is the very worst per- 
son to discharge the duties for which 
he is appointed. ' ' The act of 1852 
made it optional whether they should 
call in scientific aid, but generally 
he believed, they call in no such aid. 
Every apx^Ucation for a patent should 
be examined by some one competent 
person who thoroughly understands 
the subject of the patent. If an in- 
vention had been patented before, 
the applicant for the patent should 
be informed of it. 

In a Parliamentary debate on the 
subject, Mr. Carr, M. P., said, "his 
impression was that at the root of all 



the mischief of the present patent 
law lay the want of a proper tribunal, 
the members of which., combining 
legal and special knowledge, should 
refuse patents which ought to be re- 
fused.'>'> 

Another member of Parliament 
stated his belief that ' ' if the patent 
laws were to be maintained, it was 
necessary that there should be, in 
the first place, an examination to 
ascertain that the invention was new, 
that it ivas sufficiently described, and 
that ittoas useful.'''' 

Still another well-known Queen's 
covmsel, Mr. Grove, stated that "he 
was in favor of the establishment of 
a special patent tribunal armed with 
the power of granting or refusing 
patents on the ground that they are 
or are not for novel inventions." 

Other important evidence to hke 
effect might be cited, but we have 
given enough to show that among 
those learned and experienced Eng- 
lishmen who have given their atten- 
tion to patent law reform, there is a 
singular unanimity in the belief that 
discrimination in the gra7it of pat- 
ents is of vital necessity, and it maj^ 
be noted that those are the most ur- 
gent in advancing this theory who 
have had opportunity for practical 
observation of the exercising of such 
discrimination in our own countr3^ 

"VVe see the evils of the want of 
such discrimination forcibly repre- 
sented : patents granted with vague 
and indefinite specifications and 
claims ; patents for old or for use- 
less things, and for things already 



Tlie ExaTninincj System «.s- Viewed from Abroad. 



45 



paterttecl ; patentees left to ascer- 
tain in the conrts tlie nature and 
extent of their rights, and yet afraid 
to resort to tlie courts, so that both 
patentees and public are left in doubt 
and perplexity as to what the major- 
ity of patents are for, Avhether they 
cover much ground or little, whether 
they are valid or worthless. 

Surely such a state of aifairs as 
tliis is infinitely worse and more un- 
bearable than any evils which have 
been or can be engendered by our 
examining system. 

One of the most prominent objec- 
tions advanced in England to the 
adoption of an examining system 
analogous to our own is the demand 
which the system is supposed to re- 
quire for highly scientific officers, and 
the supposition prevails here to 
some extent that the officers of our 
own Patent Office are or should be 
highly scientific men, and not unfre- 
quently positions in that Bureau are 
sought on the strength of no other 
qualification than an assumption of 
philosophical knowledge acquired 
by cramming at our schools and 
colleges. 

We cannot conceive a more disas- 
trous event than the filling of our 
Patent Office with quasi philoso- 
phers. 

Forty-nine fiftieths of all the ap- 
plications for patents are based on 
absolute facts, to be best dealt with 
practically by matter-of-fact men, 
who can bring to bear good general 
and practical knowledge, and pow- 
ers of discrimination and concentra- 



tion, without being biased by pet 
theories of their own. 

Purely theoretical loiowledge ac- 
quired apart from practice is treach- 
erous, and standing alone is but 
poor capital for an officer of the Pat- 
ent Office. There have not been 
wanting instances of theoretical ex- 
aminers declaring machines and ap- 
paratus to be inoperative and im- 
practicable which have been shown 
to be in every-day successful opera- 
tion. Whatever science or skill may 
have been exercised in the produc- 
tion of an invention, the application 
for a patent goes before the Office, 
or rather should do, in a dry matter- 
of-fact condition, and may be better 
examined by a man of shrewdness, 
tact, and practical knowledge, than 
by one who can only bring theoreti- 
cal lore to bear on the duty. Few 
theorists think alike, and their ef- 
forts to elucidate a simple subject 
often result in confusing it, precisely 
as scientific experts in poisoning 
cases, and in not a few patent 
cases, by their opposite views, fre- 
quently succeed in confusing judges 
and juries, and in obscuring the 
truth. 

There are classes oi inventions 
which demand from the Examiner 
a degree of scientific knowledge, but 
the more practical experience this 
knowledge may be combined with 
the better will the duties be per- 
formed. 

We cannot but think that the 
alarm in England concerning the dif- 
ficulty of obtaining efficient officers 



46 



Remedies for Defective Patents 



wherewith to carry out an examin- 
ing system is a false alarm. 

To say that an examining sys- 
tem gives discretion to officials, 
which good ones may abuse through 
error or mistake of judgment, and 
which bad ones will abuse delilv 
erately, is merely to say what is 
equally true of any system of legal 
administration depending to any 
extent upon the discretion of man. 
If we are to abolish any system 
in which official discretion is ex- 
ercised, because good men are not 
infallible and bad men will do mis- 
chief, what branch of government 
can we permit to survive ? To 
apply such an argument to the 
examining system is to say that a 
system proper in its theory and 
beneficial in its aim is bad for the 
want of capable and honest men to 
carry it out, an argument to which 
we think few of our readers will be 
willing to subscribe. 

We have shown that the discre- 
tionary power which the examin- 
ing system does confer on those who 
carry it out, is» so limited and well- 
defined that if placed in the hands 
that the law intended it should be, 
the chances of injurious abuses of it 
are small indeed. 

We have shown how beneficial 
the system has been, even admitting 
it to have been but imperfectly ad- 
ministered, how grossly its defects 
have been, from natural causes, ex- 
aggerated, wherein the real defects 
lay, and what kind of changes will 
be likely to remove those defects. 



We have brought proof, too, of 
the evils ensuing from the lack of 
such a system. 

We believe that our readers, can- 
didly weighing all sides of the ques- 
tion, will coincide with us in the 
belief that the examining system 
whatever may have been the defects 
of administration, has been, upon 
the whole, of incalculable benefit 
both to inventors and the public, 
that its abolition would be a great 
misfortune, a signal for the reduc- 
tion of patent property to a state 
of confusion, and that earnest en- 
deavors to improve the organiza- 
tion of the Patent Office, in those 
respects wherein it very evidently 
may be improved, will do much to 
make the system as successful in 
practice as it is beneficent and just 
in theory. 

CHAPTEE X. 

EBMEDIES FOR DEFECTIVE 
PATENTS. 

H Avnsr& in the preceding chapters 
discussed as fully as our proposed 
limits will allow, the examining sys- 
tem, peculiar in its character and 
intent to our law, we will now turn 
attention to other provisions, which 
will be found to be equally endued 
with the spirit of justice and liber- 
ality to inventors. 

With a patent granted to him 
after an inquiry into the novelty 
and utility of the invention claimed, 
the patentee may come before the 
public with a reasonable confidence 
that his title-deed is clear and dis- 



Remedies for Defective Patents. 



4t 



tinct, aud should infringements 
upon his patent oblige him to resort 
to a court of justice, he will in doing 
so, have the legal and moral benefit 
of a prima facie presumption of 
the validity of the right he seeks to 
vindicate. 

Inventors have at times erro- 
neously supposed that the grant of 
a patent after the examination as to 
novelty and utility is conclusive 
upon those questions, and that a 
patent is a guarantee of the novelty 
and utility of the invention claimed 
therein. This, of course, is a mis- 
take. An application for a patent 
is an ex paHe proceeding, of which 
the public at large know nothing. 
That this should be so, is essential 
for the protection of the interests of 
inventors. If before the grant of a 
patent, the particulars of any claim 
of invention should be allowed to 
become matter of public notorie- 
ty, very mischievous consequences 
would be likely to follow. 

There are never wanting unscru- 
pulous and narrow-minded men, who 
if allowed the opportunity would 
exercise all means in their power 
to impede and harass inventors and 
hinder them from attaining their 
rights. To publish applications for 
patents would be to invite conspir- 
acy and factious opposition of all 
kinds from interested parties, with 
results injurious not only to in- 
ventors, but to the jjeace and morals 
of society. 

It is requisite, therefore, to pro- 
vide that no claim of invention 



shall be published prior to the grant 
of a patent ; till then the only 
parties cognizant of the claim are, 
as a rule^ the applicant and his at- 
torney, if he have one, and the 
Patent Office. 

But it is an in\iolable maxim 
that the rights of individuals can- 
not be bound by proceedings to 
Avhich the individuals aflected were 
not a party. 

Hence the members of the public 
at large cannot be bound by those 
proceedings in the Patent Office rela- 
tive to applications for j)atents, of 
which the law does not permit them 
to know, or to become parties therein. 
Any member of the public, there- 
fore, is at liberty to show by pro^Dcr 
proof, if he can, in legal proceedings 
upon a patent, that the invention 
claimed therein was not new or 
original with the patentee ; that it 
is not useful, or that for other rea- 
son the patent should not have been 
granted, or is invalid. 

The patent is jjnma/ade evidence 
in any suit, for the patentee, this 
far : that the officials authorized by 
law have after due examination 
granted the patent, as for a new and 
useful invention, which the patentee 
has sworn that he believes to be his 
own, and which, in the opinion of 
these officials, he has clearly and 
sufficiently set forth and claimed in 
his specification. 

But it may very well be that the 
patentee was mistaken in his belief 
that the invention was original with 
himself, or that he may have taken 



48 



Remedies for Defective Patents. 



a false oath, and it may also be 
that members of the public whose 
rights the patent may affect, can by 
facts and proof which were not be- 
fore the Patent Office, show that 
such was the case, or that the in- 
vention is not useful, -or that it is 
not so clearly and sufficiently de- 
scribed as to enable those skilled in 
the art to which the invention ap- 
pertains, or with which it is most 
nearly connected, to make use of it, 
from the information which the 
specification conveys. Any of these 
defences — as well as others which it 
is not to our purpose here to speak 
of, since they are fitter subjects for a 
legal than for a practical treatise — 
any member of the public is at lib- 
erty to make in a suit which a 
patentee may bring against him for 
infringement of the patent. The 
burden is upon him, however, to es- 
tablish any of such defences by clear 
and unmistakable proof, in order to 
overcome the weight of the prima 
facie presumption which the exist- 
ence of a patent raises in favor of 
the holder. 

Mere technical defences against 
patents are not favored, but the 
courts will always so construe spe- 
cifications and claims that if possi- 
ble the patent may stand. 

While, therefore, a patent is not 
to be taken as in any sense a guar- 
antee of the patentee's rights, but 
on the contrary, any member of the 
public sued for alleged infringement 
of a patent is at full liberty to show, 
if he can, that the patent should 



not have been granted, and that 
therefore, the grant of it conferred 
no lawful right upon the patentee, 
the latter may be sure that he will 
not have to contend against hostile 
judicial criticism which would give 
a favorable ear to those technical 
j)leas to which dishonest defend- 
ants will be likely to resort. 

But though the tendency of our 
courts is to deal in a liberal spirit 
with the rights of patentees, this 
liberality of course cannot extend 
so far as to givp effect to patents 
palpably deficient in respect to any 
of the legal requirements. Litiga- 
tion not unfrequently has the effect 
of showing the patentee that his 
patent is defective in some material 
particular ; and that, therefore, his 
right under it is not such as a court 
of justice can maintain and enforce. 
If this defect lie in total lack of 
novelty or utility in the invention 
claimed, it is of course beyond rem- 
edy. But it may be that the defect 
consists in the lack of one of these 
requisites in some part only of the 
thing claimed, or merely in the mode 
in which the invention is described 
or claimed. In its liberal dealings 
with the rights of patentees, whose 
patents are thus only partially or 
technically defective, our law is dis- 
tinguished from that of any other 
country. 

Under the English law, in a suit 
for infringement of a patent, proof 
that the patent includes more than 
was new and original with the pat- 
entee, is altogether fatal to the suit. 



Remedies for Defective Patents. 



49 



Our statutes, however, provide 
(section 60) that if, through inad- 
vertence, accident, or mistake, and 
witliout any wilful default, or intent 
to defraud, or mislead the public, a 
patentee shall have claimed in his 
specification to be the original and 
first inventor or discoverer of any- 
material or substantial part of the 
thing patented, of which he was not 
so, he or his legal representative 
may yet maintain suit at law or in 
equity for the infringement of any part 
thereof which toas bond fide his own, 
provided it shall be a material and 
substantial part of the thing pat- 
ented, and be definitely distin- 
guishable from the parts claimed 
without right, notwithstanding the 
specification may embrace more than 
that of which the patentee was the 
original or first inventor or dis- 
coverer. 

It will be noted that a patent 
which is too broad cannot under 
this section be partially efiective, 
unless upon the face of the patent 
as it stands the old and the new mat- 
ter be clearly distinguishable and 
separable, and the new matter be a 
material and substantial part of the 
thing patented. If the old and new 
matter are not thus definitely dis- 
tinguishable, the patent as it stands 
is altogether bad, and no suit can 
be maintained iipon it ; but such a 
state of affairs is not fatal to the 
inventor's right : he may remedy 
the error in a mode which we shall 
allude to hereafter. 

The provision in favor of pat- 



entees in the section we have quoted 
is very properly coupled with the 
condition that in such case no costs 
shall be recovered in the suit, unless 
the proper disclaimer has been en- 
tered at the Patent Office before the 
commencement of the suit ; nor shall 
the patentee be entitled to the benefit 
of the section if he shall have un- 
reasonably neglected or delayed to 
enter said disclaimer. 

This proviso is to protect the pub- 
lic against the carelessness or bad 
faith of patentees, who might wit- 
tingly mislead and deceive the pub- 
lic by continuing to claim that which 
they themselves were aware they 
had no right to claim. 

It is the right of the public that 
no patent should purport to grant 
to the patentee more than he is 
fairly entitled to. The true extent 
of his right should distinctly appear 
on the face of his patent, that the 
public may be informed of it.^ 

When, therefore, a patentee shall 
have discovered that his claims in- 
clude more than that of which he 
.was actual first inventor, he acts in 
bad faith towards the public, from 
whom he holds his patent, if he de- 
lays to rectify the error, and reduce 
his claim to its legitimate extent ; 
and much more does he act in bad 
faith if, with such knowledge, he 
attempts to enforce submission to 
his unjust claim by proceedings in 
the courts. 

When, therefore, a patentee dis- 
covers that his patent covers more 
than that of which he was the ac- 



50 Remedies for Defective Patents — Disclaimers — Reissues. 



tual first inventor, and finds that 
the old matter is definitely distin- 
guishable and separable from the 
new, he is morally bound to avail 
himself without delay of the sec- 
tion of the law which permits him to 
remedy such an error by filing in the 
Patent Office what is termed a 

Disclaimer. 

This is a statement in writing, 
signed by the party disclaiming, 
attested by one or more witnesses, 
and recorded in the Patent Office, 
making disclaimer of such parts of 
the thing patented as the party in 
interest shall not choose to claim or 
hold by virtue of the patent. The 
right to file a disclaimer is not con- 
fined to the patentee, but his heirs 
or his assigns, whether of the whole 
or of a sectional interest in the pat- 
ent, have the like right. Of course, 
when the assignee of a sectional in- 
terest makes such a disclaimer, his 
interest only is affected by it. 

But it is not every patent which 
is too broad that can be thus cured. 
The remedy of disclaimer is of course 
applicable only to cases where the 
patent specifies and claims divisible 
features of invention. The joart re- 
tained and the part disclaimed must 
be clearly separable and distinguish- 
able, and the part to be retained 
must be a material and substantial 
part of the thing originally patented. 

When, therefore, the patent is not 
thus divisible, when the original 
claim is not of such character as to 
allow of a correction of the patentee's 



error by cutting out some clearly 
separable part, the removal of which 
will yet leave in the patent a ma- 
terial and substantial patentable 
subject of claim, the remedy of dis- 
claimer cannot be resorted to. 

i«f ow there are very many patents 
inadvertently made too broad, in 
which the character of the inven- 
tion, or of the description or claim, 
would prevent any such rectifica- 
tion of the patent by mere excision. 
In such case the patentees would be 
without remedy, and would find 
themselves deprived of all right 
without default of their own, — a 
state of affairs by which very many 
really meritorious and useful inven- 
tors would be irreparably injured. 

To obviate such mischief the law 
has provided the remedy of 
Reissue. 

This provision is one which has 
no parallel in any other patent law, 
and is one of those really beneficent 
measures which have tended to make 
our law so effective, because so just 
and liberal. 

Section 53 of the act provides, 
that "whenever any patent is in- 
operative or invalid, by reason of a 
defective or insufficient specifica- 
tion, or by reason of the patentee 
claiming as his own invention or dis- 
covery more than he had a right to 
claim as new, if the error has arisen 
by inadvertence, accident, or mis- 
take, and without any fraudulent or 
deceptive intention, the Commis- 
sioner shall, on the surrender of 
such patent, and the payment of the 



Remedies for Defective Patents — Reissues. 



51 



duty required by law, cause a new 
patent for the same invention, and 
in accordance with the corrected 
specifications, to be issued to the 
patentee, or in the case of his death, 
or assignment of the whole, or any 
undivided ^Dart of the original patent 
to his executors, administrators, or 
assigns, for the unexpired part of 
the term of the original patent^ the 
surrender of which shall take effect 
upon the issue of the amended pat- 
ent.'''' 

For patents which are too broad 
the remedy of reissue is applicable, 
when the defect is such as to render 
the original patent altogether in- 
operative or invalid, because the 
character of the invention, or of the 
description and claim is such that 
there is no material or sulistantial 
part of the thing patented, which 
being truly and justly the patentee's 
own, is clearly separable and dis- 
tinguishable in the patent as it 
stands from that which is not the 
patentee's own. In other words, 
the remedy of reissue is applicable 
when that of disclaimer is not. 

A patent which being too broad 
may yet be remedied by disclaimer, 
is not in its original condition alto- 
gether inoperative and invalid, but, 
as we have seen, is by the terms of 
the law valid, for all that which 
being a material and substantial 
part of the thing patented is truly 
and justly the patentee's own. 

Upon such a patent, and for the 
infringement of such material and 
substantial part thereof as is lond 



fide the patentee's own, he is allowed 
to maintain a suit, because such 
part is definitely distinguishable and 
divisible in the patent as it stands 
from the parts claimed without right, 
which latter may, therefore, be re- 
moved from the patent by simple 
excision. 

But a patent which being too 
broad must be remedied by surrender 
and reissue, is inoperative and in- 
valid, and no suit can be maintained 
upon it, because the old and new 
matter cannot be separated in the 
description and claim as they stand ; 
no distinct part can be taken away 
and still leave a material and sub- 
stantial part of the thing patented, 
definitely distinguishable from the 
joarts claimed without right. Divi- 
sion therefore being impossible, and 
since the patent as it stands, not 
being so divisible is wholly invalid, 
the only remedy is reconstruction 
of the description and claim, and 
this can be effected by way of sur- 
render and reissue. 

But it is not only as a remedy for 
patents, which, being too broad, can- 
not be cured by disclaimer, that re- 
issue is available. It is, in fact, a 
sort of universal medicine — a cure 
for all the ills that specifications and 
claims are heir to. The section we 
have quoted makes the remedy of 
reissue available whenever^ through 
innocent inadvertence, accident, or 
mistake, a defective or insufficient 
specification renders the patent in- 
operative or invalid. 

The importance of this is appar- 



52 



Remedies for Defective Patents — Reissues. 



ent when it is remembered that-'tlie 
consideration passing from the in- 
ventor to the ]3ublic, for which a 
patent is granted, is the making and 
disclosure of an invention. The word 
disclosure argues a full and candid 
imparting of all the knowledge,nec- 
essary to enable others to carry the 
invention into effect as fully and 
eflfectually as the inventor himself ; 
"'otherwise he has not given the con- 
sideration required of him^tand there- 
fore his patent is not good. * Thus, in 
the words of our law, "the inventor 
is required to file in the Patent 
Office a written description of his 
invention, and of the manner and 
process of making, constructing, 
compounding, and using the same, 
in such clear, full, and concise and 
exact terms' as to enable any person 
skilled in the art or science to which 
it appertains, or with which it is 
most nearly ccfnnected, to make, 
construct, compound, and use the 
same." A patent, then, is not valid 
if oessential information is omitted,* 
or if anything be so* scantily, ob- 
scurely, or unintelHgibly stated^that 
the whole description taken together 
is not sufficient to guide those skilled 
in the art to a correct and beneficial 
use of the invention. How likely 
such defects are to exist where an 
uninformed inventor has attempted 
to draw his own description, or has 
employed an incompetent attorney 
to do it for him, can readily be ap- 
prehended. The right of reissue 
enables a patentee so to correct 
or amplify his description as that 



it shall present a fair and faith- 
ful performance of his contract with 
the public, and so his privilege will 
be saved to him. 

Still another end, beneficial to in- 
ventors, is served by the power of 
reissue. 

' It is essential to the faithful per- 
formance by the inventor of his part 
of the contract between the public 
and himself that he should clearly 
and candidly state what it is that 
he claims to be his invention, so 
that the public may be fully advised, 
from his own statement, of the ex- 
tent of his right ; or, as the law has 
it, he must "particularly point out 
and distinctly claim the part, im- 
provement, or combination, which 
he claims as his invention or dis- 
covery. "« 

* What is termed the specification 
comprises the description and this 
necessary claim, which latter is to 
be construed with reference to the 
description. The courts, therefore, 
thus construing the claim, will al- 
ways, if possible, give it meaning 
and effect ; and meaning and effect 
the very fullest,- — consistent with 
the patentee's apparent right, — that 
l3y the light which the description 
affords, they can give it. For not 
only will they endeavor so to 
construe the patent that it shall 
stand ; but, if possible, so that it 
shall be effective to protect the 
whole of the patentee's apparent 
invention. But, in doing this, 
they cannot of course go beyond 
what api^ears on the face of the 



Remedies for Defective Patents — Reissues. 



53 



patent. Their liberality must be 
bounded by the actual contents of 
the specification. By a liberal con- 
struction of the whole document 
together they can give definite sig- 
nificance to an apparently obscure 
claim, or give wider meaning to an 
apparently limited claim, than if it 
were taken by itself its mere lan- 
guage would imply. But they can- 
not supply omissions, or construe 
the patent to cover that which is 
not directly or indirectly claimed. • 

ISTow it may happen, and fre- 
quently does happen, that an inventor 
inadvertently omits such reference 
in his description or claim to some 
material and substantial part of his 
invention as would warrant a judicial 
construction of his patent as cover- 
ing that part. This then is a case 
where the patent, by reason of a de- 
fective and insufficient specification, 
is inoperative to give an exclusive 
right to the actual invention. In 
such event the patentee may sur- 
render his patent and take a new, or 
as it is termed, a reissue patent upon 
an amended specification, which 
shall distinctly specify and claim the 
whole of the actual invention shown^ 
but not claimed in the original 
jDatent. 

Again it sometimes happens that 
one patent has been made to em- 
brace several distinct patentable im- 
provements, each of which might 
have been made the subject of a dis- 
tinct patent, and it may become 
proper and desirable thus to separate 
them. For this the law i^rovides 



that the Commissioner may in his 
discretion cause several patents to be 
issued for distinct and separate parts 
of the thing patented, upon de- 
mand of the applicant, and the pay- 
ment of the required fee for a re- 
issue, for each of such reissued let- 
ters-patent. • 

It is carefully to be borne in mind 
that the legitimate object of a reissue 
is simply to correct that wherein the 
original patent was defective, more 
fuUy or correctly to describe or claim 
the whole of that invention which 
the original patent should have de- 
scribed or claimed. The words of 
the law are that the Commissioner 
shall, on the surrender of a patent, 
and payment of the required duty, 
cause a new patent for the- same in- 
vention, and in accordance with the 
corrected specifications, to be issued; 
and it is distinctly provided that no 
new matter shall be introduced into 
the specification. This term, new 
matter, has reference not to mere 
language, but to substance. Such 
changes or amphflcations of language 
may be made as are necessary to 
efiect the legitimate object, the cor- 
rection of that wherein the original 
patent was defective, whether in de- 
scription, or in claim. But no new 
or changed feature of invention can 
be introduced, because the reissue 
patent is to be for the identical 
thing which constituted the actual 
invention of the patentee when he 
applied for Ms original patent, and 
for which that patent would then 
have been granted had the descrip- 



54 



Remedies for Defective Patents — Reissues. 



tion or claim not been defective or 
insufficient. * 

The nature and object of reissues 
have been greatly misunderstood, 
and what is intended as a remedial 
measure in favor of the rights of 
inventors was, until very recently, 
oftentimes perverted into a means 
for unlawfully stretching the ap- 
parent scope of patents beyond the 
true invention, and thus imposing 
upon and injuring the public. 

This was effected, sometimes by 
basing upon such rudimentary traces 
of important principles as might 
be found in a patented invention, 
broad and sweeping claims couched 
in language designed, in effect, to 
cover any known application of such 
principles to a like purpose, and 
sometimes by a deliberate interj)ola- 
tion in the amended specification of 
new matter not to be fovind in the 
original patent at all. 

Under careless and incompetent 
administrations this evil practice 
grew, until it had assumed alarming 
proportions. No sooner did a patent 
for some really useful invention be- 
come remunerative, and so draw 
attention, than it became the object 
of the greedy and unscrupulous to 
find some old patent worthless in 
itself, and purchasable for a song, 
but in which might be found some 
rude embryonic traces of the princi- 
ples involved in the valuable patent. 
Then a reissue was obtained, and 
all the ingenuity of language Avas 
called into play to give this reissue 
the apparent effect of anticipating 



and covering whatever was valuable 
in the later j)atent. This species of 
reissue became a weapon wherewith 
to embarrass and levy blackmail 
upon meritorious patentees and 
manufacturers, and either to cut off" 
or compel a division of the hard- 
earned fruits of their ingenuity, or 
of their enterprise and invested 
capital. 

This had the effect too of casting 
a taint of suspicion upon reissues 
generally, to the great injury of 
bond fide meritorious inventors. 

It was found necessary to cast 
some restraints upon the grant of 
reissues, so as to put a stop to this 
mischievous practice. 

Whereas, therefore, previous to 
the passage of the last act (July, 
1870), reissues might be obtained by 
the assignees of patents without 
any reference to the original pat- 
entees whatever, it is now required 
by Sec. 33, that though patents may 
be reissued to assignees, yet the ap- 
plication must be made, and the 
new specification sworn to by the 
inventor or discoverer, who may 
reasonably be supposed to know 
best what his own actual inven- 
tion was, and to be the least likely 
person to make false or rash rep- 
resentations in regard thereto, 
while the doubt whether the pat- 
entee will prove a complacent tool, 
must tend greatly to check and 
lessen the speculation which for- 
merly traded in old patents, for no 
better purpose than the obtaining 
of brviramagem reissues. This pro- 



Bemedies for Defective Patents — Reissues. 



55 



vision, however, is not aj)plicable to 
patents assigned previous to July, 
1870. Tliis requirement of the law 
has been somewhat complained of, 
on the ground that it places as- 
signees of patents too much at the 
mercy of jjatentees, and enables the 
latter, should they be so disposed, 
to levy blackmail upon those who 
have already paid them for the prop- 
erty, the title to which it may be 
found necessary to better by reissue. 
There may be some ground for this, 
but the apprehended evil seems to 
be one which the exercise of proper 
discretion and care will prevent. 
More caution than was formerly ex- 
ercised by purchasers of patents 
will certainly be required under the 
present state of the law : this, how- 
ever, is a material advantage, for 
the caution required of purchasers 
must necessarily reflect itself in 
greater caution upon the part ot 
patentees in the mode of obtaining 
their patents, since imperfect patents 
will be found less available com- 
mercially. 

The same causes (the creation of a 
spirit of inquiry and discrimination 
as to patents) which will check the 
trading in patents for mere specula- 
tive purposes, will ultimately serve 
to check, to some extent, at least, 
the practices of that class of men, 
who, under too lax a state of the 
law, undeservedly flourish, and who 
may be termed ]professional pat- 
entees ; men who, without any merit 
as inventors, find in small patents 
a ready means of supplying their 



pockets, at the expense of the pub- 
lic. While it would be impolitic 
and wrong to make any distinctions 
as regards title to the benefit of 
the patent law, between inventions 
of difterent degrees of apparent im- 
portance, it is both politic and 
right to establish any measures 
which will be hkely to raise the 
general standard of patents in point 
of legal value. This is not more to 
the interests of the public, than it 
is to the true interest of bond fide 
inventors. Any measure, there- 
fore, which, while it does not tend to 
work any real hardship to patentees 
or patent owners, yet tends to im- 
press upon inventors the necessity 
in their own interest of exercising 
circumspection in drawing their 
specifications, is beneficial, and as 
such a measure may this touching 
reissues be regarded. 

When the patent has been as- 
signed, and there are several as- 
signees, they must all be assenting 
parties to an application for a re- 
issue. 

It is also distinctly specified bj'' 
the letter of the last act that "no 
new matter shall be introduced into 
the specification ; nor in case of a 
machine patent shall the model or 
drawings be amended, except each 
by the other." 

This proviso, however, is added : 
" But, where there is neither model 
nor drawing, amendments may be 
made, upon proof satisfactory to the 
Commissioner that such new mat- 
ter or amendment was a part of the 



56 



General Features of the U. S. Patent Laws. 



original invention, and was omitted 
from the specification by inadver- 
tence, accident, or mistake, as afore- 
said." 

The wisdom of this last provis- 
ion, or of the admission under any 
circumstances of extrinsic evidence 
in applications for reissue, may be 
doubted. Bond fide cases for the 
exercise of this rather swee]3ing dis- 
cretion by the Commissioner, must 
be comparatively very rare, and the 
measure might seem fairly obnox- 
ious to the charge of extending 
temptation for much misrepresenta- 
tion and ini]30sition, without the 
likelihood of working any very ma- 
terial measure of justice. 

As a further necessary check upon 
the grant of reissues, the law re- 
quires that applications therefor 
shall be subject to revision and re- 
striction, in the same manner as 
original applications are. 

As the surrender of an original 
patent does not take effect until the 
issue of the amended patent, if ap- 
plication for the latter be refused 
and withdrawn, the original remains 
in force. 

It is provided that a reissue 
patent, with its corrected specifica- 
tion, shall have the effect and ope- 
ration in law, on the trial of all 
actions for causes thereafter arising, 
as though the same had been origi- 
nally filed in such corrected form. 
Of causes of action under the origi- 
nal patent, the surrender and reis- 
sue, since it involves a distinct 
avowal by the patentee that such 



original patent was inoperative and 
invalid, is of course an abandon- 
ment. 

CHAPTER XI. 

GEKBRAL FEATURES OF THE 
UNITED STATES PATENT LAWS. 

In this, our concluding chapter, 
we shall refer briefly to those pro- 
visions of our patent law which in 
the preoeding chapter have escaped 
notice. 

It is, perhaps, one of the most 
striking illustrations of the differ- 
ence in spirit and principle between 
our patent law and that of Eng- 
land, that whereas in the latter the 
patentee's right rests upon his being 
first to disclose the invention to the 
public hy his patent, with us the 
question of right is determined by 
reference to the date of invention. 
The inquiry is, who first made, not 
Avho first disclosed to the public, 
an invention which may be in dis- 
pute. 

Under our law an inventor does 
not lose his rights merely by public 
use or sale of his invention during 
a period not exceeding tioo years prior 
to his application for a patent. It 
maybe questioned, perhaps, whether 
this two years grace be not too great 
a stretch of liberality ; certainly, 
however, it allows time, which in 
most cases would be ample either 
for ascertaining practically the posi- 
tive and relative utility of an idea, 
or for obtaining that pecuniary aid 
which a poor inventor may need for 



General Features of the U. S. Patent Laios — Caveats. 



57 



the bringing of his invention into 
use. 

Time taken in conducting experi- 
ments witli an invention is attended 
with the risk tliat tlie invention may 
be made by some other person in the 
meantime, or that the idea may 
come to the knowledge of some un- 
scrupulous party, who will not hesi- 
tate to appropriate and patent as 
his own, the original conception of 
another, if it seem likely to prove at 
all valuable. As applications for 
patent are secret ex ])arte transac- 
tions, such theft might be consum- 
mated without the knowledge of the 
true inventor, until on applying 
for his patent, he should find an- 
other party already in possession of 
a patent wrongfully obtained. This 
probability, were there no check upon 
it, would prevent, by making too 
hazardous, that expenditure of time, 
money, and skill, which is necessary 
to reduce many original inventions 
to the best practical shape, and 
would compel the premature patent- 
ing of half-hatched ideas. This 
danger the law cannot entirely 
obviate, but it has provided some 
measure of protection to inventors 
during the time which may be re- 
quired by them for conducting ex- 
periments to mature their ideas. 

Section 40 of the act provides that 
any citizen of the United States who 
has made a new invention or dis- 
covery, and desires further time to 
mature the same, may file a caveat 
in the secret archives of the Patent 
Office. 



Caveats 
Are simply brief descriptions set- 
ting forth the design of an invention 
and its distinguishing characteris- 
tics, accompanied by a statement 
that the caveator who claims the 
invention as his own, is engaged in 
taking steps to perfect it, prior to 
applying for letters-patent. This 
caveat is filed in the secret archives 
of the Office, and is accessible only 
to the officials and the caveator, or 
such persons as he may duly author- 
ize to have access to it. As a caveat 
refers to an avowedly uncompleted 
invention, while letters-patent are 
granted only for one which is com- 
plete, no proceedings are taken 
upon a caveat by the Office, but it re- 
mains for the caveator to mature his 
invention and file his application for 
a patent within one year ; which 
time, however, may be extended 
from year to year by renewing the 
caveat. It is common to allude to 
caveats as affording a temporary 
security, thus leading many inven- 
tors to a mistaken impression that 
a caveat is a sort of temporary 
patent. This it is not ; a patent 
being a grant of the exclusive right 
for a certain period to make, use, 
and sell a completed invention, is 
the act of the pubhc in consideration 
of the disclosure of such completed 
invention. A caveat is merely 
the caveator's own act in reference 
to an incomplete invention which he 
desires to keep secret till he has had 
time to mature it, in order that he 
may then disclose it and obtain from 



58 



General Features, of the U. 8. Patent Laws. 



the public the exclusive right to 
make, use, and sell it. A caveat, 
therefore, is, as its name implies, sim- 
ply a warning, notifying the Patent 
OflBce that the caveator has made 
an invention, which he intends to 
mature and to apply for a patent 
therefor within one year. 

The effect which the law gives to 
this warning is to make it obligatory 
upon the Patent Office during one 
year after the filing or the renewal 
of a caveat, to grant no patent for 
the invention to any other claim- 
ant without giving the caveator op- 
portunity to establish his priority of 
right. To this end, notice is to be 
given to the caveator of the filing of 
any interfering application for a 
patent, without, however, informing 
him as to the name or whereabouts 
of the applicant, and he is allowed 
three months from the time of such 
notice to complete his invention and 
file Ms application for a patent. If 
he fail to do this, he will be con- 
sidered to have waived his claim, 
and that of the other ap^Dlicant will 
be considered and passed upon with- 
out reference to the caveat. 



Section 24 of the Patent Act pro- 
vides, that any person who has in- 
vented or discovered any new and 
useful art, machine, manufacture, 
or composition of matter, or any 
new and useful improvement there- 
of, not known cjr used by others in 
this country, and not patented or 
described in any printed inihlication 
in this or any foreign country before 



his invention or discovery thereof, 
and not in public use or on sale for 
more than two years prior to his ap- 
plication, unless the same is proved 
to have been abandoned, may, upon 
payment of the duty required by 
law, and other due proceedings had, 
obtain a patent therefor. 

It is first to be noticed in this sec- 
tion that the term "any person" 
includes citizens and aliens, who in 
reference to the patent laws stand 
upon precisely the same footing. 

And it may be here stated that 
an inventor, whether citizen or al- 
ien, who may have previously pat- 
ented his invention in foreign coun- 
tries, does not thereby prejudice his 
right to a patent here, provided that 
the invention has not been intro- 
duced into public use — by which is 
meant a use in public — in the United 
States /or more than two years prior 
to his application for the patent, but 
his patent will expire at the same 
time with the foreign patent, or if 
there are several foreign patents, 
then with that having the shortest 
term, and in no case can the term 
of a United States patent exceed 
seventeen vears from its date (sec- 
tion 25). 

Next comes the recital of patent- 
able subject-matters, and then the 
recital of conditions essential to the 
obtaining of a patent, and which of 
course therefore are essential to the 
maintenance of a patent which may 
have been granted. 

These conditions are — 

1st. That the thing for which a 



Conditions to Patentability. 



59 



patent is sought shall not have been 
known or used by others in this 
country before the invention thereof 
by the claimant. 

The mere knowledge or use of the 
thing in Si foreign country will not, 
of itself, bar or invalidate a patent, 
and proof of such knowledge or use, 
except it be in the nature of a 
patent, or printed puhlication, is 
not admissible against a patent 
excepting where it is proposed, by 
bringing home to the patentee a 
knowledge thereof, to show that his 
claim of invention was not a bond 
fide claim, and that his patent was 
obtained by fraudulent representa- 
tion. As to what knowledge or use 
in this country will suffice to bar or 
invalidate a patent, the rule would 
seem to be that it must not have 
been an entirely secret knowledge or 
use, but open so far as to argue ac- 
cessibility by the public : beyond this 
it matters not how limited the prior 
knowledge or use may have been. 

2d. That the thing for which a 
patent is sought shall not, prior to 
the invention thereof by the appli- 
cant, have hQ&a. patented or described 
in any printed publication in this or 
any foreign country. 

A prior j^atent for, or printed 
publication of, a similar thing is the 
best possible evidence of want of 
novelty in an invention, and to this 
end 2^ foreign patent or printed pub- 
lication is equally effective with a 
domestic one. In either case it is a 
record, accessible to the public, of 
the jDrior existence of the invention 



claimed by the applicant or patentee 
as original with himself. 'But to 
bar an application or invalidate a 
patent, a j)rior patent or printed 
publication, whether domestic or 
foreign, should set forth the inven- 
tion so clearly and intelligibly, as to 
enable a competent person skilled in 
that branch of the arts to which the 
alleged invention may appertain, to 
make or use it. Mere vague sug- 
gestions of something similar will 
not suffice. ^ 

In the absence, then, of any prior 
knowledge or use in this country, 
and of any patent or printed publi- 
cation in this or any foreign country, 
an invention is new in the eye of the 
law, and the inventor has an in- 
choate right therein which he may 
perfect and secure by a patent. 

He is not bound to apply for a 
patent within any specified time, 
nor will delay to do so, for however 
long a time, of itself, there being no 
other claimant, forfeit his right. The 
statute, however, points out two 
ways in which the right may be lost : 

1. By public use or sale of the 
invention for more than two years 
prior to application for a patent. 

Public use is a use, not by the 
pul)lic necessarily, but any use — 
though it may be only limited — in 
public, so that there may be public 
knowledge of the thing for more 
than two years. 

As public use or sale for less than 
two years is not a bar to a patent, 
and as within such period an inven- 
tor might have made his invention 



60 



General Features of the U. S. Patent Laws. 



a source of profit to himself by 
manufacture and sale, or by allow- 
ing the use of it to others, it would 
not be right if under a patent sub- 
sequently obtained he could disturb 
or prohibit the further use of the 
articles thus previously sold by him, 
or which he had permitted to be 
made and used. It is therefore en- 
acted by Section 37 that every per- 
son who may have purchased of the 
inventor, or with his knowledge and 
consent may have constructed, any 
newly invented or discovered ma- 
chine, or other patentable article, 
prior to the application for a patent, 
or sold or used one so constructed, 
shall have the right to use, and vend 
to others to be used, the specific thing 
so made or purchased, without lia- 
bility therefor. 

The terms of this section exclude 
from its benefit those who may, 
prior to application for patent, have 
constructed or applied the invention, 
in defiance of the inventor's right, 
or without his assent or knowledge. 

2. By abandonment. 

An invention may be abandoned 
at any time j^rior to application for 
patent. But the law does not favor 
and will never raise, except in the 
case of public use or sale for more 
than two years, a presumption of 
the abandonment of an invention. 
Before it will be concluded that an 
invention has been abandoned, there 
must be some clearly proven act or 
expression on the part of the in- 
ventor, unmistakably indicating his 
intention not to claim any exclusive 



right in the invention, but to allow 
it to become pitblic property, for an 
invention can be abandoned only to 
the public at large. 

As a rule, therefore, a valid pat- 
ent may be obtained for any im- 
provement which has not been 
known or used by others in this 
country^ nor been patented or de- 
scribed in any printed publication 
in this or any foreign country before 
the date of its invention or dis- 
covery by the party claiming it as 
his own, unless he has allowed it to 
be in public use or on sale for more 
than two years before his application 
for a patent, or has at any time be- 
fore such application by a voluntary 
and deliberate act abandoned it to 
the public. 

Should the claim of an applicant 
for a patent be rejected, or should 
a patent granted be assailed in liti- 
gation, on the ground of a prior 
foreign iDatent or description in a 
foreign printed publication, if the 
applicant or patentee can establish 
by competent proof that his inven- 
tioii preceded the date of such prior 
foreign patent or publication, a pat- 
ent will be granted him if he be an 
applicant ; or, if he be a patentee, 
his patent will be sustained. 

And, in the case of an applicant 
for a patent, ex parte evidence in 
such case suffices to establish his 
priority of right. 

Such evidence is also competent 
to overcome the rejection of a claim 
for a patent on the ground of de- 
scription in a printed publication in 



General Features of the U. S. Paient Laws — Interferences. 61 



this country, or a rejection on the 
ground that the invention is already 
in public use or on sale, unless it 
shall appear that such public use or 
sale has been for more than two 
years prior to the application for a 
patent. 

But if application for a patent 
be made for something already pai- 
ented in this country, or which an- 
other party is at the same time 
seeMng to patent here, it may be 
necessary in either case to try the 
question of priority of invention in 
the Office. This is done by means 
of what is termed an interference — 
a judicial proceeding in which the 
rival claimants of the same inven- 
tion are allowed to present testi- 
mony in support of their respective 
claims, the testimony being taken 
in the same mode as in a cause in 
equity, and each party having the 
right to be present at the examina- 
tion of, and to cross-examine, his op- 
ponent's witnesses. This departure 
from the general rule, which makes 
applications for patents altogetlier 
ex parte proceedings, is necessitated 
by tlie circumstances of the case. 
The Patent Office can lawfully grant 
a patent only to the true and first 
inventor, and can lawfully grant a 
second patent for the same thing 
only to him who shall appear to be 
the actual true and first inventor, 
and therefore to have a claim supe- 
rior to that of the first patentee. If, 
therefore, there be before the Office 
at the same time two or more par- 
ties, each claiming to be the true 



and first inventor of the same 
thing ; or, if application be made 
for a patent for the same thing, in 
which another party already has, by 
patent granted, a vested exclusive 
right, testimony must be adduced 
and proceedings had to determine 
the question of priority of inven- 
tion. To these proceedings it is 
absolutely necessary that the rival 
applicants in the one case, or the 
applicant and prior patentee in the 
other, should both be made parties ; 
for by these proceedings their re- 
spective rights in the Patent Office 
are to be bound ; and no man's rights 
are to be bound except by proceed- 
ings to which he is a party. 

It is provided, therefore, by Section 
42 of the Patent Act, that "when- 
ever an application for a patent 
which, in the opinion of the Com- 
missioner, would interfere with any 
pending application, or with any 
unexpired patent, lie shall give notice 
to the applicants, or applicant and 
patentee, as the case may be, and 
sliall direct the primary examiner 
to proceed to determine the question 
of priority of invention. And the 
Commissioner may issue a patent 
to the party who shall be adjudged 
the prior inventor." 

Some years ago, the proceedings 
in interference cases were very loose 
and unsatisfactory. Tliere was no 
mode of compelling the attendance 
of necessary witnesses ; there was 
no system or order as to the time 
and mode of taking the testimony, 
and the parties were left to develop 



G2 General Features of the U. S. Patent Laws — Interferences. 



by such evidence as they could, such 
a case as they might choose. Con- 
sequently, the endeavor of each 
party was to make out his own case, 
by the light of that made out by 
his oiDponent ; and there was every 
opportunity and temptation to the 
parties to adapt their proof to the 
emergencies of the occasion, rather 
than to the true facts of the case. 
It can hardly be doubted that the 
result must have been much in- 
justice, and not a little false swear- 
ing. 

Judicious improvements, how- 
ever, in the law, and in the rules 
and regulations of the Patent Office, 
have, by assimilating the proceed- 
ings in interference cases as far as 
possible to those in a court of justice, 
given them a fair degree of the 
justice and certainty attending or- 
dinary judicial proceedings. 

The law has provided for securing 
the attendance of necessary Avit- 
nesses by subpoena. 

The rules of the Office have pro- 
vided for proper system in the taking 
of testimony, by establishing that in 
all cases the prior patentee or ear- 
liest applicant for patent, shall be 
deemed prima facie the first in- 
ventor, thus putting him in the jDosi- 
tion of a quasi defendant. 

The later applicant, therefore, or 
party complainant, must first take 
testimony to show the date of his 
invention, for which purpose a cer- 
tain limit of time is allowed him, 
after which, within another set 
period, the prior patentee or appli- 



cant must take the testimony in 
support of his claim, and after the 
closing of all such direct testimony 
both parties may take rebutting tes- 
timony. 

This right of rebuttal in both 
parties is necessary. The position 
of rival claimants of the same in- 
vention has not any real analogy 
to that of complainant and defend- 
ant in a suit, the analogy made 
by the rules of the Office being alto- 
gether artificial, and merely for the 
sake of convenience and order. To 
such cases no ordinary rules of plead- 
ing are applicable. Each party is, 
in fact, both plaintiff" and defend- 
ant ; there is, therefore, an equal 
right, as there may be an equal 
necessity in each party, to rebut his 
opponent's direct testimony, and it 
is convenient and orderly that all 
the evidence which is merely re- 
buttal of that of an opponent, shall 
be separate from the direct testimony 
adduced for the purpose of establish- 
ing a party's own case. 

This is especially necessary in 
view of the circumstances in which 
many cases of interference originate. 

We refer, of course, to those cases 
of frequent occurrence in which 
there has been some contact or com- 
munication, direct or indirect, be- 
tween the respective parties, leading 
to a charge, either on one part, or 
mutual, of theft of the invention in 
dispute. 

As ordinary rules of pleading are 
inapplicable to interference cases, 
and no such previous knowledge and 



General Features of the U. S. Patent Laios — Interferences. 63 



control is, therefore, had of the tes- 
tunony to be adduced as those rules 
afford, it is essential to both parties 
to have the like right to rebut if they 
can, before the close of the evidence, 
such points as may be first raised 
in the opponent's testimony. 

But these rules would not of them- 
selves suffice to secure the fair trial 
and adjudication of cases of inter- 
ference. Of course the main object 
of each party to an interference, is 
to establish a date of invention 
earlier than that proved by his op- 
ponent ; and if, as under the old 
rules, the cases to be proved were 
left entirely in the dark till devel- 
oped by the evidence, the party 
taking evidence last would have the 
opportunity, which he might not 
always scorn to use, to adapt his 
proof to the emergencies of the 
case. 

For a pretty effectual method of 
stopiiing such possible sharp prac- 
tice, the public is indebted to the late 
Commissioner of Patents, Pisher, 
who established the following bene- 
ficial rule : 

Before declaring an interference 
proper, a preliminary interference 
will be declared, in which each 
party, without being informed who 
the interfering claimant is, will be 
required to file a statement under 
oath, giving a detailed histor}' of 
the invention, describing its original 
concej)tion, the successive experi- 
ments, extent, and character of use, 
and various forms of embodiment, 
&c. The statement of each party 



is to be sealed, and not opened until 
at an appointed time by the ex- 
aminer of interferences. If that 
officer then determines that the re- 
spective statements show a case 
warranting the declaration of an 
interference, he declares it, and 
neither of the opposing parties can 
have access to the statement of the 
other until the time for fihng both 
has expired. 

Tliis rule certainly ofters some 
check upon the subsequent proceed- 
ings, some boimds to the testimony 
to be adduced, by confining the 
parties to a particular case of their 
own shomng, and by affording a 
basis for cross-examining an oppo- 
nent's witnesses. 

But the rule is serviceable in 
another way, as allowing the oppor- 
timity of nipping in the bud many 
interferences, which, if proceeded 
with, might result in nothing but 
useless expense. 

Thus, it is provided, that if the 
party upon whom rests the burden 
of proof — i. e., the latest applicant 
fails to file a statement, or if his 
statement fails to overcome the 
prima facie case made by the re- 
spective applications — i. c, if the 
date of invention given by the later 
apphcant should not be anterior to 
the date of application by the earlier 
— or if it shows that he has aban- 
doned his invention, or that it has 
been in pubhc use more than two 
years before his application, the 
other party wiU be entitled to an 
immediate adjudication of the case 



64 General Features of the U. S. Patent Laws — Interferences. 



upon the record : unless a presump- 
tion is created that his right to a 
patent is affected by the alleged pub- 
lic use of the invention, in which 
case the interference may be pro- 
ceeded with. This latter proviso is 
necessary because a determination 
against the right of one man to a 
patent cannot be made upon the ex 
ixirte statement of another. A per- 
son's ex parte sworn statement may 
be allowed to determine the question 
of his own right, but not that of the 
right of another. It is further pro- 
vided that if the earlier applicant 
fail to file a preliminary statement, 
he will not be allowed to present any 
testimony going to prove that he 
made the invention at a date prior 
to his application. 

The preliminary statements are 
not evidence for the parties making 
them. 

Under the present law and office 
rules, then, cases of interferences 
may be regarded as a fair and effi- 
cient means of trying and determin- 
ing questions of priority of inven- 
tion, and a just ultimate decision 
may be expected in every case, for 
parties to such a case have the same 
rights of appeal from the Examiner 
to the Board of Examiners in chief, 
and from that Board to the Com- 
missioner of Patents in person, as 
in other questions touching the 
rights of applicants for patents. 

As regards the cases in which 
under the law the Commissioner 
may declare an interference, they 
include any and every case in which 



there may arise adverse claims of 
invention, whether by reason of two 
or more contemporary pending ap- 
plications for patents for inventions 
altogether or in some material part 
the same, or by reason of an apph- 
cation for a patent or for a reissue 
with a claim to something claimed 
or clearly shown in any patent or 
patents previously granted. 

This power may be very benefi- 
cially used to check what was at 
one time a practice as common as 
it is mischievous, that of reissu- 
ing patents for the sole purpose 
of so extending their claims as to 
cover some feature of value in pat- 
ents granted subsequently to those 
sought to be reissued. 

In the case of an interference 
between an application for a patent 
and a patent granted, the power of 
the Commissioner extends only to 
granting another patent to the ap- 
plicant, should he appear to have 
been the actual first and true inven- 
tor. He cannot recall or cancel the 
prior patent. 

His office is in its nature minis- 
terial, and concerns only the grant- 
ing of patents ; and his discretion- 
ary, or, what may be termed his 
quasi-judicial powers, therefore, are 
confined to the consideration and 
determination of such questions only 
as concern the granting of patents. 
His duty is to grant a patent to 
whomsoever may appear to be the 
true and first inventor of a patent- 
able subject-matter, and justly en- 
titled under the law to receive a 



General Features of the U. S. Patent Laws — Priority. 



65 



patent therefor. In the execution 
of this duty it is necessary for him 
to consider and decide dispvited 
questions of priority of invention ; 
but with that and the grant or re- 
fusal of a patent, in accordance with 
his determination, his duty and 
power end. 

The XDOwer of annulling or de- 
creeing the invalidity of patents, or 
other public grants, is one of the 
chancery powers of the courts of 
the United States. 

Consequently where, through the 
issue of an interference in the Pat- 
ent Office, or through accident, there 
are two or more patents for the same 
thing, of which only one of course 
can be valid, the invalidity of the 
others can be authoritatively as- 
certained and decreed only by a 
com-t of the United States having 
jurisdiction of such questions. 

Under Section 68 of the Patent 
Act : " Whenever there shall be in- 
terfering patents, any i^erson inter- 
ested in any one of such interfering 
patents, or in the working of the in- 
vention claimed under either of such 
patents, may have relief against the 
interfering patentee, and all parties 
interested under him, by suit in 
equity against the owners of the 
interfering patent ; and the court 
having cognizance thereof, on notice 
to adverse parties and other due 
proceedings had, may adjudge and 
declare either of the patents void in 
whole or in part, or inoperative, or 
invalid in any particular part of the 
United States according to the in- 



terest of the parties in the patent or 
the invention j)^tented. But no 
such judgment or adjudication shall 
affect the right of any person ex- 
cept the parties to the suit and 
those deriving title under them 
subsequent to the rendition of such 
judgment." 

In the case of an interference in 
the Patent Office between an ap- 
plication and a prior patent, 
should the appUcant be adjudged 
the prior inventor, the only measure 
of justice which the Commissioner 
has power to perform is, by grant- 
ing a patent to the appUcant, to put 
him in a position to avail himself, 
should he desire to do so, of the 
remedy presented by this section 
against the prior patentee. 



The point to be adjudged in a 
case of interference is "priority of 
invention." The general rule is 
that he is in the eye of the law the 
first inventor who has first jperfected 
and adapted the invention to use. 

But tills rule is subject to the 
qualification that he who first in- 
vents, i. e., mentally originates, 
shall have the prior right, if he v:ere 
using reasonable diligence in adapt- 
ing and perfecting the invention. 
Thus it is made by the statute a de- 
fence against a patent, that the pat- 
entee had surrepititiously or unjustly 
obtained the patent for that which 
was in fact invented by another, 
who was using reasonable diligence in 
adapting and perfecting the same. ' 
• It has been held that the words 



66 



General Features of the U. 8. Patent Laws — Priority. 



"surreptitiously," or "unjustly," 
as here used, do not necessarily im- 
ply that had faith on the part of the 
patentee must be shown to make 
this defence available. But it will 
be deemed that a patent has been 
wrongfully obtained, when it is for 
something which was in fact first 
invented by another than the pat- 
entee, if the prior inventor was at 
the time using reasonable diligence 
in adapting and j)erfecting the in- 
vention. 

This reconciles the reference in 
our patent law of the doctrine that 
"he who is prior in time has the 
better right" to the time of the 
making of an invention, with the 
general maxim that «" the laws 
serve the diligent, and not the sloth- 
ful." A right of priority must be 
perfected by diligence. «■ 

The courts will not allow the plea 
of "prior invention" to overcome 
the title of a patentee whose patent 
was obtained in good faith, unless 
it be shown that the alleged j)rior 
inventor had actually reduced his 
concej)tion to practice in a practi- 
cally useful and operative form, or 
that being the first to invent, he was, 
at the time the patentee obtained his 
patent, exercising reasonable dili- 
gence to adapt and perfect the in- 
vention." 

A mere prior conception of an 
idea, ending in experiment, and 
never reduced to that practical 
shape in which alone it can be use- 
ful to the public, and can attract 
public attention, will not suflflce to 



destroy the title of a patentee, who 
being himself a bond fide original 
inventor, has reduced the invention 
to sviccessful ]3ractice, and published 
it by obtaining his patent. * 

By these judicially established 
principles the Patent Office is guided 
in determining the questions of 
"priority of invention, " in cases of 
interference. 

If the interference be between the 
claim of an applicant and that of 
a patentee, the prima facie presump- 
tion is in favor of the latter, and 
the burden is upon the applicant to 
show that he was the first inventor, 
and also that he had either actually 
reduced the invention to a practi- 
cally operative shape before the in- 
terfering patent was obtained, or 
that at the time it was obtained, he 
was exercising reasonable diligence 
to bring it into such shape ; and, 
furthermore, it must appear that the 
applicant has not unnecessarily de- 
layed bringing his claim, but that 
he has been reasonably diligent, as 
well in bringing his application as 
in perfecting his invention. If he 
cannot show this, the first patent 
will not be disturbed by the grant 
of a second 

Where the interference is between 
independent applicants for patents, 
there is not that strength of pre- 
sum^Dtion in favor of either party 
which the j)ossession of a patent, a 
vested right, creates : still there is 
a presumption in favor of the earli- 
est applicant, on the reasonable prin- 
ciple that, in the absence of proof to 



General Features of the U. S. Patent Laws — Diligence. CI 



the contrary, the first to seek the 
benefit of the law must be presumed 
to have the prior and better right. 
This presumption goes no further 
tlian to require that tlie later appli- 
cant must first prove a date for his 
invention anterior to the application 
of his opponent, before the latter 
need offer proof as to the date of his 
invention other than that which his 
application affords. 

The general principles applied to 
the decision of priority, as between 
applicants for patents, are the same 
as in other cases. *He will, as a rule, 
be held the first inventor, entitled 
to the benefit of the law, who being 
bond fide an inventor first reduced 
the invention to a practical form 
beneficial to the public. ♦ 

As to the evidence which will 
suffice to prove invention, the rule 
would seem to be that the idea must 
have been so far reduced to i^ractice 
as to have been illustrated or de- 
scribed in a mode suflflcient to en- 
able a person skilled in the art to 
which the invention may refer, to 
make or practice it, without calling 
for the exercise on his loart of more 
than the ordinary skill of his trade. 
Less than this will not evidence a 
matured, and therefore patentable, 
invention ; such an invention as the 
law Avill protect. 

It will be seen that the question 
of "diligence" has a most material 
bearing upon that of "jDriority of 
right in law," and this matter of 
diligence enters not only into the 
reduction of an invention to prac- 



tice, but into the making and prose- 
cution of application for a patent, 
wherever there is a question of right 
between independent inventors. Es- 
pecially is this the case where one 
or other of the disputants is in pos- 
session of a patent obtained in good 
faith : the right of such a patentee 
will not be disturbed in favor of a 
slothful inventor, prior in point of 
conception, but who, after the grant 
of the jDatent to his competitor, of 
which as matter of public record he 
in common with the rest of the pub- 
lic is presumed to have knowledge, 
has unnecessarily delayed j)erfecting 
and adapting the invention to use, 
and presenting his claim. 

It has been found necessary to 
spur the diligence of applicants for 
patents even in cases entirely ex 
parte by providing (Sec. 32) that all 
applications for patents shall be com- 
pleted and prepared for examination 
within two years after the filing of 
the petition, and in default thereof, 
or upon failure of the applicant to 
prosecute the same within two years 
after any action therein^ of lohich no- 
tice shall have been given to the ap- 
plicant, they shall be regarded as 
abandoned by the parties thereto, 
unless it be shown to the satisfac- 
tion of the Commissioner that such 
delay was unavoidable. 



If an applicant for a patent is not 
satisfied with the justice of a de- 
cision of the Commissioner of Pat- 
ents, refusing him a patent, he may 
appeal to the Supreme Court of the 



68 



General Features of the U. S. Patent Laws — Appeals. 



District of Columbia, which may 
reverse tlie decision of the Commis- 
sioner. Bytlie decision of tlae court, 
duly certified to and recorded in the 
Patent Office, the further proceed- 
ings in that office are to be regula- 
ted, and if no reasons are found for 
refusing a patent, beyond those 
raised and adjudicated in the ap- 
peal, the Commissioner is bound by 
a decision favorable to the appli- 
cant to issue a patent. But as the 
court is to consider the case, on the 
evidence produced before the Commis- 
sioner^ and its decision is confined 
to the 'points raised in the appeal^ if 
the Commissioner after such de- 
cision finds good reasons, not in- 
volved in the appeal, or depending 
upon new evidence not formerly be- 
fore him, for still withholding the 
patent, It is within his discretionary 
power so to do. In other words, the 
decision of the court upon appeal, if 
favorable to the applicant, is not 
that the Commissioner shall issue a 
patent, but that he shall not with' 
hold it upon the grounds raised in 
the appeal ; and it might seem that 
as often as the Commissioner may 
refuse a patent upon neio grounds, 
the applicant may appeal to the 
court. The right of appeal to the 
Supreme Court of the District of 
Columbia does not extend to parties 
in interference. 

The remedy of an inventor against 
what he may consider an unjust re- 
fusal of a patent does not end even 
here. 

Section 52 of the act provides 



that when an application for a j)at- 
ent is refused /or any reason what- 
ever, either by the Commissioner, 
or by the Supreme Court of the Dis- 
trict of Columbia on appeal from the 
Commissioner, the applicant may 
have remedy by bill in equity in a 
court of the United States having 
cognizance of such cases under the 
patent law ; and the court upon 
notice to adverse parties, and other 
due proceedings had, may adjudge 
that such applicant is entitled, ac- 
cording to law, to receive a patent 
for his invention, as specified in his 
claim, or for any part thereof, as the 
facts in the case may appear. 

This remedy by bill in equity is 
applicable to all cases where a pat- 
ent may have been refused. 

If the refusal has been on account 
of an adverse decision by the Com- 
missioner, in a case of interference, 
the party in whose favor the Com- 
missioner's decision was rendered is 
entitled to notice, and to become a 
party in the proceedings upon the 
bill. Where there is no opposing 
party a copy of the bill is to be 
served on the Commissioner. 

Proceedings under this section are 
not in the nature of an appeal, and 
are not to be governed by the evi- 
dence in the case before the Com- 
missioner, but they are original 
proceedings, in which such original 
evidence may be adduced as shall 
be considered essential to arriving 
at a just decision. 

An adjudication in favor of the 
applicant authorizes the Commis- 



Remedies for Infringement. 



69 



sioner to issue such patent as it 
shall be decided the applicant is en- 
titled to, upon the appUcant filing 
in the Patent Office a copy of the 
adjudication, and otherwise com- 
plying with the provisions of the 
law. 



It oul}' remains now briefly to in- 
quire as to the modes in which a rem- 
edy may be had for the infringement 
of a patent. 

There are two ends which it is 
generally essential to the interests 
of a patentee he should have the 
means of accomplishing by resort 
to the courts, — a remedy for injury 
from past infringement, and the 
prevention of infringement in the 
future. 

Damages for infringement may be 
had by action at law in the Circuit 
Courts of the United States, or 
those District Courts exercising cir- 
cuit court jurisdiction. And as a 
check upon deliberate, wrongful in- 
fringements, the courts are empow- 
ered, ''whenever in any such ac- 
tion a verdict is rendered for the 
plaintiff, to enter judgment thereon 
for any sum above the amount 
found by the verdict as the actual 
damages sustained, according to 
the circumstances of the case, not 
exceeding three times the amount 
of such verdict, together with the 
costs. But this remedy at law is 
generally quite inadequate to the 
needs of patentees, smce it does not 
prevent further infringement by the 
party sued, and for each new act of 



infringement fresh suit must be 
brought. For the purpose of pre- 
venting further infringement, it is 
necessary to resort to proceedings in 
equity, which may be brought in the 
same courts. Section 55 of the law 
empowers the courts, upon bill in 
equity filed by any party aggrieved, 
to grant injunctions to prevent the 
violation of any right secured by 
patent, on such terms as the court 
may deem reasonable." 

Injunctions are either temporary 
or 2^^r2Mual. A temporary injunc- 
tion is one granted before a final 
hearing of the cause, and may be 
granted at the discretion of the 
court at anj" time after the filing of 
the bill, upon motion, of which rea- 
sonable previous notice shall have 
been given to the defendant, accom- 
panied by copies of the affidavits to 
be read in support of the motion. 

A temporary injunction prohibits 
continuance of the infringement 
complained of in the bill until the 
question of the complainant's right 
under his patent shall have been 
tried, or until further order of the 
court. It is a summary proceed- 
ing, in order to protect a patentee 
against the irreparable injury that 
might ensue to him by an unchecked 
continuance of infringement during 
the time necessary for bringing a 
cause to final hearing. 

But as it is a jDroceeding tending 
to bind the rights of a defendant, 
before a fair and full trial has been 
had, and one which may work 
great, and, as it may prove, unwar- 



to 



General Features of the U. S. Patent Laws. 



ranted injury to the party enjoined, 
the courts exercise the power with 
great caution, and only where there 
has been exclusive possession under 
the patent for some years, witli ac- 
quiescence of the public in the pat- 
entee's right, or where the patent has 
been previously judicially sustained 
after full trial at law or in equity ; 
nor will the power be exercised if 
the defendant, by affidavits, rebut- 
ting and overbearing the weight of 
those of the complainant, can throw 
reasonable doubt, on grounds not 
theretofore adjudicated, upon the 
patentee's title, or can indicate that 
he is not a mere wrongdoer, but has 
a good defence against the action. 
The court in granting a temporary 
injunction, may couple with the 
grant such conditions, either on one 
or on both sides, as under the cir- 
cumstances of the case may seem 
reasonable ; or, it may allow the 
defendant to give security to keep 
an account of profits from the use of 
the invention, and this it will do, 
where it appears from the circum- 
stances that in this way the interests 
of the patentee will be substantially 
protected, while an injunction would 
work disproportionate mischief to 
the defendant. A temporary injunc- 
tion will not be granted where it 
appears that the patentee has not 
been diligent in seeking his remedy, 
but has allowed infringement to con- 
tinue for a considerable period of 
time without taking steps to iDre- 
vent it. 

A temporary injunction may be 



dissolved at any time upon motion 
of the party enjoined, made after 
reasonable previous notice to the 
complainant, and supported by affi- 
davits showing good and sufficient 
reason. 

A perpettial injunction is one 
granted upon a decree in favor of the 
patentee after final hearing upon 
proofs and argument m equity, or 
after a judgment m favor of the 
patentee in a trial at law, and its 
effect is to enjoin the defendant from 
infringement during the term of the 
patent. 

Formerly it was the practice here, 
as it still is m England, for the court 
in equity, when an application for an 
injunction raised disputed questions 
of fact affecting the patentee 's title, 
to order a trial at law, that these 
questions of fact might be passed 
upon by a jury ; but here, since pat- 
ent causes, whether in law or in 
equity, are cognizable in the same 
court, and since it is competent for 
the court in equity to consider and 
determine all disputed points in 
such causes, whether of fact or of 
laAV, generally patent cases are now 
so tried and determined, upon proofs 
taken after the course in equity, be- 
fore an examiner appointed by the 
court. 

The questions of fact arising m 
patent causes are generally of such 
a nature that they may be deter- 
mined much more speedily, readil}-, 
and satisfactorily by a judge than 
by a jury, and under the present 
law all the remedies which proceed- 



Remedies for Infringement — Conclusion. 



n 



ings at law might aflford a patentee 
for infringement of his right, he can 
obtain by proceedings in equity, 
while the latter will also afford him 
further remedy, very much more 
complete and beneficial than he 
could possibly obtain by proceed- 
ings at law. 

"Upon a decree being rendered 
for infringement' the complainant 
shall be entitled to recover, in 
addition to the profits to be ac- 
counted for by the defendant, the 
damages the complainant has sus- 
tained thereby, and the court shall 
assess the same, or cause the same 
to be assessed under its direction, 
and the court shall have the same 
powers to increase the same, in its 
discretion, that are given by this 
act to increase the damages found 
by verdict in actions upon the 
case." (Sec. 55.) 

It is not necessary to sustain an 
action for infringement, that the 
whole of the invention patented 
should have been infringed, but 
remedy may be had for the infringe- 
ment of any material or substantial 
part thereof claimed. 

Actions for infringement may be 
brought in the name of the owner 
or joint owners of the legal title to 
the patent throughout the whole of 
the United States, or within the 
particular part or portion of the 
United States in which the action 
is brought. A licensee cannot bring 



such an action, except he join with 
him the party or parties in whom 
the legal title to the patent is vested 
within the territory over which the 
court wherein the action is brought 
has jurisdiction. Actions for in- 
fringement must be brought during 
the term of the patent, or within 
six years after its expiry. 

COKCLUSION. 

\.i this point we close our brief 
summary of the general features of 
the Patent Laws of the United 
States, and with it the treatise. 

As far as was possible, we have 
ranged the subjects together in such 
a way as to produce a connected 
review of the entire ground. Of 
course, there are many sx^ecial mat- 
ters of law and doctrine respecting 
patents which have not been touched 
upon, specialties out of place in a 
pamphlet avowedly devoted to a 
grouping of information of a merely 
general character. 

As to those subjects which are 
treated more at length, we venture 
to express a hope that our endeavors 
plainly and concisely to illustrate 
the principles governing property in 
invention, will not be altogether in- 
eflectual in throwing light upon 
matters which have heretofore, by 
so many minds, been but partially 
and obscurely understood. 

H. & C. H. 



THE ACT 



RELATING TO 



PATENTS 



ji^isTTD coi=:z":EaiC3-i3:TS. 



APPROVED JULY 8, 1870. 



PRINTED FROM AN OFFICIAL COPY 

ESPECIALLY FOR AND PUBLISHED BY 

HOWSON & SON, 

AT THEIR 

United States and European Patent Ofices, 



FORREST BUILDING, 

119 So. Fourth Street, 

PHILADELFHIA. 



MARBLE BUILDING, 

605 Seventh Street, 

WASHINaTON, D. C. 



PHILADELPHIA: 
SHERMAN & CO., PRINTERS. 

1872. 



75 



AN ACT 

To Eevise, Consolidate, and Amend the Statutes 
Eelatinq to Patents and Copyrights. 

Be it enacted hy the Senate ajid Souse of Representatives of the 
United States of Aynerica in Congress assembled, That there shall 
be attached to the Department of the Interior the otHce, here- 
tofore established, known as the Patent Office, wherein all 
records, books, models, drawings, specifications, and other pa- 
pers and things pertaining to patents, shall be safely kept and 
preserved. 

Sec. 2. Aiid he it further enacted, That the offi.cers and em- 
ployees of said office shall continue to be : one Commissioner of 
Patents, one Assistant Commissioner, and three examiners-in- 
chief, to be appointed by the President, by and with the advice 
and consent of the Senate; one chief clerk, one examiner in 
charge of interferences, twenty-two principal examiners, twenty- 
two first-assistant examiners, twenty-two second-assistant ex- 
aminers, one librarian, one machinist, five clerks of class four, 
six clerks of class three, fifty clerks of class two, forty-five 
clerks of class one, and one messenger and purchasing clerk, all 
of whom shall be appointed by the Secretary of the Interior, 
upon nomination of the Commissioner of Patents. 

Sec. 3. And he it further enacted, That the Secretary of the 
Interior may also appoint, upon like nomination, such addi- 
tional clerks of classes two and one, and of lower grades, copy- 
ists of drawings, female copyists, skilled laborers, laborers, and 
watchmen, as may be from time to time appropriated for by 
Congress. 

Sec. 4. And he it further enacted. That the annual salaries of 
the officers and employees of the Patent Office shall be as fol- 
lows: 



76 

Of the Commissioner of Patents, four thousand five hundred 
dollars. 

Of the Assistant Commissioner, three thousand dollars. 

Of the examiners-in- chief, three thousand dollars each. 

Of the chief clerk, two thousand five hundred dollars. 

Of the examiner in charge of interferences, two thousand five 
hundred dollars. 

Of the principal examiners, two thousand five hundred dol- 
lars each. 

Of the first-assistant examiners, one thousand eight hundred 
dollars each. 

Of the second-assistant examiners, one thousand six hundred 
dollars each. 

Of the librarian, one thousand eight hundred dollars. 

Of the machinist, one thousand six hundred dollars. 

Of the clerks of class four, one thousand eight hundred dol- 
lars each. 

Of the clerks of class three, one thousand six hundred dol- 
lars each. 

Of the clerks of class two, one thousand four hundred dollars 
each. 

Of the clerks of class one, one thousand two hundred dollars 
each. 

Of the messenger and purchasing clerk, one thousand dollars. 

Of laborers and watchmen, seven hundred and twenty dol- 
lars each. 

Of the additional clerks, copyists of drawings, female copy- 
ists, and skilled laborers, such rates as may be fixed by the acts 
making appropriations for them. 

Sec. 5. And be it Jurther enacted, That all officers and em- 
ployees of the Patent Ofiice shall, before entering upon their 
duties, make oath or afiirmation truly and faithfully to execute 
the trusts committed to them. 

Sec. 6. Aiid be it further enacted, That the Commissioner and 
chief clerk, before entering upon their duties, shall severally give 
bond, with sureties, to the Treasurer of the United States ; the 
former in the sum of ten thousand dollars, and the latter in the 
sum of five thousand dollars, conditioned for the faithful dis- 
charge of their duties, and that they will render, to the proper 
officers of the treasury, a true account of all money received 
by virtue of their office. 



77 

Sec. 7. And be it further enacted, That it shall be the duty o. 
the Commissioner, under the direction of the Secretary of the 
Interior, to superintend or perform all the duties respecting the 
granting and issuing of patents which herein are, or may here- 
after be, by law directed to be done ; and he shall have charge 
of all books, records, papers, models, machines, and other 
things belonging to said office. 

Sec. 8. And he it further enacted^ That the Commissioner 
may send and receive by mail, free of postage, letters, printed 
matter, and packages relating to the business of his office, in- 
cluding Patent Office reports. 

Sec. 9. And he it further enacted^ That the Commissioner 
shall lay before Congress, in the month of January, annually a 
report, giving a detailed statement of all moneys received for 
patents, for copies of records or drawings, or from any other 
source whatever ; a detailed statement of all expenditures for con- 
tingent and miscellaneous expenses ; a list of all patents which 
were granted during the preceding year, designating under 
proper heads the subjects of such patents; an alphabetical list 
of the patentees, with their places of residence ; a list of all 
patents which have been extended during the year ; and such 
other information of the condition of the Patent Office as may 
be useful to Congress or the public. 

Sec. 10. And he it further enacted, That the examiners-in- 
chief shall be persons of competent legal knowledge and scien- 
tific ability, whose duty it shall be, on the written petition of 
the appellant, to revise and determine upon the validity of the 
adverse decisions of examiners upon applications for patents, 
and for reissues of patents, and in interference cases ; and when 
required by the Commissioner, they shall hear and report upon 
claims for extensions, and perform such other like duties as he 
may assign them. 

Sec. 11. And he it further enacted, That in case of the death, 
resignation, absence or sickness of the Commissioner, his duties 
shall devolve upon the Assistant Commissioner until a successor 
shall be appointed, or such absence or sickness shall cease. 

Sec. 12. And he it further enacted, That the Commissioner 
shall cause a seal to be provided for said office, with such device 
as the President may approve, with which all records or papers 



issued from said office, to be used in evidence, shall be authen- 
ticated. 

Sec. 13. And be it further enacted, That the Commissioner 
shall cause to he classified and arranged in suitable cases, in the 
rooms and galleries provided for that purpose, the models, spe- 
cimens of composition, fabrics, manufactures, works of art, and 
designs, which have been, or shall be deposited in said office : 
and said rooms and galleries shall be kept open during suitable 
hours for public inspection. 

Sec. 14. And be it further enacted, That the Commissioner 
may restore to the respective applicants, such of the models be- 
longing to rejected applications as he shall not think necessary 
to be preserved, or he may sell or otherwise dispose of them, 
after the application has been finally rejected for one year, pay- 
ing the proceeds into the treasury, as other patent moneys are 
directed to be paid. 

Sec. 15. And be it further enacted, That there shall be pur- 
chased for the use of said office, a library of such scientific works 
and periodicals, both foreign and American, as may aid the 
officers in the discharge of their duties, not exceeding the amount 
annually appropriated by Congress for that purpose. 

Sec. 16. And be it further enacted, That all officers and em- 
ployees of the Patent Office shall be incapable, during the period 
for which they shall hold their appointments, to acquire or take, 
directly or indirectly, except by inheritance or bequest, any right 
or interest in any patent issued by said office. 

Sec. 17. And be it further enacted, That for gross misconduct 
the Commissioner may refuse to recognize any person as A 
patent agent, either generally, or in any particular case; but 
the reasons for such refusal shall be duly recorded, and be sub- 
ject to the approval of the Secretary of the Interior. 

Sec. 18. And be it further enacted, That the Commissioner 
may require all papers filed in the Patent Office, if not correctly, 
legibly, and clearly written, to be printed, at the cost of the; 
party filing them. 

Sec. 19. And be it further enacted, That the Commissioner, 
subject to the approval of the Secretary of the Interior, may 
from time to time establish rules and regulations, not inconsis- 



79 

tent with law, for the conduct of proceedings in the Patent 
Office. 

Sec. 20. A^id he it further enacted, That, the Commissioner 
may print or cause to he printed, copies of the specifications of 
all letters-patent, and of the drawings of the same, and copies 
of the claims of current issues, and copies of such laws, decis- 
ions, rules, regulations, and circulars, as may he necessary for 
the information of the puhlic. 

Sec. 21. And he it further enacted, That all patents shall be 
issued in the name of the United States of America, under the 
seal of the Patent Office, and shall he signed by the Secretary 
of the Interior, and countersigned hy the Commissioner, and 
they shall be recorded, together with the specification, in said 
office, in books to be kept for that purpose. 

Sec. 22. And he it further enacted, That every patent shall 
contain a short title or description of the invention or discovery, 
correctly indicating its nature and design, and a grant to the 
patentee, his heirs or assigns, for the term of seventeen years, 
of the exclusive right to make, use, and vend the said invention 
or discovery throughout the United States, and the Territories 
thereof, referring to the specification for the particulars thereof; 
and a copy of said specifications and of the drawings shall be 
annexed to the patent, and be a part thereof. 

Sec. 2.3. And be it further enacted, That every patent shall 
date as of a day not later than six months from the time at 
which it was passed and allowed, and notice thereof was sent to 
the applicant or his agent, and if the final fee shall not be paid 
within that period, the patent shall be withheld. 

Sec. 24. And he it further enacted. That any person who has 
invented or discovered any new and useful art, machine, manu- 
facture, or composition of matter, or any new and useful im- 
provement thereof, not known or used by others in this country, 
and not patented, or described in any printed publication in 
this or any foreign country, before his invention or discovery 
thereof, and not in public use, or on sale, for more than two 
years prior to his application, unless the same is proved to have 
been abandoned, may, upon payment of the duty required by 
law, and other due proceedings had, obtain a patent therefor. 



80 

Sec. 25. And be it further enacted, That no person shall be 
debarred from receiving a patent for his invention or discovery, 
nor shall any patent be declared invalid by reason of its having 
been first patented or causedio be patented in a foreign country ; 
provided the same shall not have been introduced into public 
use in the United States for more than two years prior to the 
application, and that the patent shall expire at the same time 
with the foreign patent, or, if there be more than one, at the 
same time with the one having the shortest term ; but in no 
case shall be in force more than* seventeen years. 

Sec. 26. A7id be it further enacted. That before any inventor 
or discoverer shall receive a patent for his invention or dis- 
covery, he shall make application therefor, in writing, to the 
Commissioner, and shall file in the Patent OflSce a written 
description of the same, and of the manner and process of 
making, constructing, compounding, and using it, in such full, 
clear, concise, and exact terms as to enable any person skilled 
in the art or science to which it appertains, or with which it is 
most nearly connected, to make, construct, compound, and use 
the same ; and in case of a machine, he shall explain the princi- 
ple thereof, and the best mode in which he has contemplated 
applying that principle so as to distinguish it fi-om other inven- 
tions ; and he shall particularly point out and distinctly claim 
the part, improvement, or combination which he claims as his 
invention or discovery ; and said specification and claim shall 
be signed by the inventor and attested by two witnesses. 

Sec. 27. And be it further enacted, That when the nature of 
the case admits of drawings, the applicant shall furnish one 
copy signed by the inventor or his attorney in fact, and attested 
by two witnesses, which shall be filed in the Patent Office; and 
a copy of said drawings to be furnished by the Patent Ofl&ce, 
shall be attached to the patent as part of the specification. 

Sec. 28. And be it further enacted, That when the invention 
or discovery is of a composition of matter, the applicant, if re- 
quired by the Commissioner, shall furnish specimens of ingredi- 
ents and of the composition, sufficient in quantity for the pur- 
pose of experiment. 

Sec. 29. And be it further enacted, That in all cases which 
admit of representation by model, the applicant, if required by 



81 

the Commissioner, shall furnish one of convenient size to ex- 
hibit advantageously the several parts of his invention or dis- 
covery. 

Sec. 30. And be it further enacted, That the applicant shall 
make oath or affirmation that he does verily believe himself to 
be the original and first inventor or discoverer of the art, ma- 
chine, manufacture, composition, or improvement for which he 
solicits a patent; that he does not know and does not believe 
that the same "was ever before known or used ; and shall state 
of what country he is a citizen. And said oath or affirmation 
may be made before any person within the United States au- 
thorized by law to administer oaths, or when the applicant 
resides in a foreign country, before any minister, charge 
d'affaires, consul, or commercial agent, holding commission 
under the government of the United States, or before any 
notary public of the foreign country in which the applicant 
may be. 

Sec. 31. And be it further enacted, That on filing of any such 
application and the payment of the duty required by law, the 
Commissioner shall cause an examination to be made of the 
alleged new invention or discovery ; and if on such examina- 
tion it shall appear that the claimant is justly entitled to a 
patent under the law, and that the same is sufficiently useful 
and important, the Commissioner shall issue a patent therefor. 

Sec. 32> A7id be it further enacted, That all applications for 
patents shall be completed and prepared for examination within 
two years after the filing of the petition, and in default thereof, 
or upon failure of the applicant to prosecute the same within 
two years after any action therein, of which notice shall have 
been given to the applicant, they shall be regarded as abandoned 
by the parties thereto, unless it bo shown to the satisfaction of 
the Commissioner that such delay was unavoidable. 

Sec. 33. And be it further enacted. That patents may be 
granted and issued or reissued to the assignee of the inventor, 
or discoverer, the assignment thereof being first entered of 
record in the Patent Office ; but in such case the application for 
the patent shall be made and the specification sworn to by the 
inventor or discoverer; and also, if he be living, in case of an 
application for reissue, 

11 



Sec. 34. And he it Jurtlicr enacted, That when any person, 
having made any new invention or discovery for which a 
patent might have been granted, dies before a patent is granted, 
the right of applying for and obtaining the patent shall devolve 
on his executor or administrator, in trust for the heirs-at-law of 
the deceased, in case he shall have died intestate ; or if he shall 
have left a will, disposing of the same, then in trust for his 
devisees, in as full manner and on the- same terms and condi- 
tions as the same might have been claimed or enjoyed by him 
in his lifetime; and when the application shall be made by such 
legal representatives, the oath or affirmation required to be 
made shall be so varied in form that it can be made by them. 

Sec. 35. And he it further enacted, That any person who has 
an interest in an invention or discovery, whether as inventor, 
discoverer, or assignee, for which a patent was ordered to issue 
upon the payment of the final fee, but who has failed to make 
payment thereof within six months from the time at which it 
was passed and allowed, and notice thereof was sent to the ap- 
plicant or his agent, shall have a right to make an application 
for a patent for such invention or discovery the same as in the 
case of an original application : Provided, That the second ap- 
plication be made within two years after the allowance of the 
original application. But no person shall be held responsible 
in damages for the manufacture or use of any article or thing 
for which a patent, as aforesaid, was ordered to issue, prior to 
the issue thereof: Provided, That when an application for a 
patent has been rejected or withdrawn, prior to the passage of 
this act, the applicant shall have six months from the date of 
such passage to renew his application, or to file a new one ; and 
if he omits to do either, his application shall be held to have 
been abandoned ; upon the hearing of such applications aban- 
donment shall be considered as a question of fact. 

Sec. 36. And he it further enacted. That every patent or any 
interest therein shall be assignable in law, by an instrument in 
writing ; and the patentee or assigns or legal representative 
may in like manner, grant and convey an exclusive right under 
his patent to the whole or any specified part of the United 
States; and said assignment, grant, or conveyance shall be 
void as against any subsequent purchaser or mortgagee for a 
valuable consideration, without notice, unless it is recorded in 
the Patent Office within three months from the date thereof. 



88 

Sec. 37. A?id he it further enacted, That every person who 
may have purchased of the inventor, or with his knowledge and 
consent may have constructed, any newly invented or discov- 
ered machine, or other patentable article, prior to the applica- 
tion by the inventor or discoverer for a patent, or sold, or used 
one so constructed, shall have the right to use, and vend to 
others to be used, the specific thing so made or purchased, 
without liability therefor. 

Sec. 38. And be it further enacted. That it shall be the duty 
of all patentees, and their assigns and legal representatives, and 
of all persons making or vending any patented article for or 
under them, to give sufficient notice to the public that the same 
is patented, either by fixing thereon the word "patented," to- 
gether with the diiy and year the patent was granted ; or when, 
from the character of the article, this cannot be done, by fixing 
to it or to the package wherein one or more of them is inclosed, 
a label containing the like notice; and in any suit for infringe- 
ment, by the party failing so to mark, no damage shall be re- 
covered by the plaintiff, except on proof that the defendant was 
duly notified of the infringement, and continued, after such 
notice, to make, use, or vend the article so patented. 

Sec. 39. And be it further enacted, That if any person shall, 
in any manner, mark upon anything made, used, or sold by 
him for which he has not obtained a patent, the name or any 
imitation of the name of any person who has obtained a patent 
therefor, without the consent of such patentee or his assigns 
or legal representatives ; or shall, in any manner, mark upon 
or affix to any such patented article the word "patent" or 
"patentee," or the words "letters-patent," or any word of like 
import, with intentto imitate or counterfeit the mark or device 
of the patentee, without having the license or consent of such 
patentee or bis assigns or legal representatives ; or shall, in any 
manner, mark upon or affix to any unpatented article the word 
"patent," or any word importing that the same is patented, for 
the purpose of deceiving the public, he shall be liable for every 
such offence to a penalty of not less than one hundred dollars, 
with costs; one moiety of said penalty to the person who shall 
sue for the same, and the other to the use of the United States, 
to be recovered by suit in any district court of the United 
States within whose jurisdiction such offence may have been 
committed. 



84 

Sec. 40. And be it further enacted, That any citizen of the 
United States, who shall have made any new invention or dis- 
covery, and shall desire further time to mature the same, may, 
on payment of the duty required by law, file in the Patent Office 
a caveat setting forth the design thereof, and of its distinguish- 
ing characteristics, and praying protection of his right until 
he shall have matured his invention ; and such caveat shall be 
filed in the confidential archives of the office and preserved in 
secrecy, and shall be operative for the term of one year from 
the filing thereof, and if application shall be made within the 
year by any other person for a patent with which such caveat 
would in any manner interfere, the Commissioner shall deposit 
the description, specification, drawings, and model of such ap- 
plication in like manner in the confidential archives of the 
office, and give notice thereof, by mail, to the person filing the 
caveat, who, if he would avail himself of his caveat, shall file 
his description, specification, drawings, and model within three 
months from the time of placing said notice in the post office 
in Washington, with the usual time required for transmitting 
it to the caveator added thereto, which time shall be indorsed 
on the netice. And an alien shall have the privilege herein 
granted, if he shall have resided in the United States one year 
next preceding the filing of his caveat, and made oath of his 
intention to become a citizen. 

Sec. 41. And be it further enacted, That whenever on exami- 
nation, any claim for a patent is rejected for any reason what- 
ever, the Commissioner shall notify the applicant thereof, giving 
him briefly the reasons for such rejection, together with such 
information and references as may be useful in judging of the 
propriety of renewing his application or of altering his specifi- 
cation ; and if, after receiving such notice, the applicant shall 
persist in his claim for a patent, with or without altering his 
specifications, the Commissioner shall order a re-examination 
of the case. 

Sec. 42. And be it further enacted, That whenever an appli- 
cation is made for a patent which, in the opinion of the Com- 
missioner, would interfere with any pending application, or with 
any unexpired patent, he shall give notice thereof to the appli- 
cants, or applicant and patentee, as the case may be, and shall 
direct the primary examiner to proceed to determine the ques- 



85 

tion of priority of invention. And the Commissioner may issue 
a patent to the party who shall be adjudged the prior inventor, 
unless the adverse party shall appeal from the decision of the 
primary examiner, or of the board of examiners-in-chief, as the 
case may be, within such time, not less than twenty days, as the 
Commissioner shall prescribe. 

Sec. 43. A7id he it further enacted, That the Commissioner 
may establish rules for taking affidavits and depositions required 
in cases pending in the Patent Office, and such affidavits and de- 
positions may be taken before any officer authorized by law to 
take depositions to be used in the courts of the United States, 
or of the State where the officer resides. 

Sec. 44. And ie it further enacted, That the clerk of any court 
of the United States, for any district or Territory wherein tes- 
timony is to be taken for use in any contested case pending in 
the Patent Office, shall, upon the application of any party 
thereto, or his agent or attorney, issue subpoena for any witness 
residing or being within said district or Territory, command- 
ing him to appear and testify before any officer in said district 
or Territory authorized to take depositions and affidavits, at 
any time and place in the subpoena stated ; and if any witness, 
after being duly served with such subpoena, shall neglect or re- 
fuse to appear, or after appearing shall refuse to testify, the 
judge of the court whose clerk issued the subpoena may, on proof 
of such neglect or refusal, enforce obedience to the process, or 
punish the disobedience as in other like cases. 

Sec. 45. And he it further enacted, That every witness duly 
subpoenaed and in attendance shall be allowed the same fees as 
are allowed to witnesses attending the courts of the United 
States, but no witness shall be required to attend at any place 
more than forty miles from the place where the subpoena is 
served upon him, nor be deemed guilty of contempt for disobey- 
ing such subpoena, unless his fees and travelling expenses in going 
to, returning from, and one day's attendance at the place of exam- 
ination, are paid or tendered him at the time of the service of the 
subpoena ; nor for refusing to disclose any secret invention or 
discovery made or owned by himself. 

Sec. 46. And he it further enacted, That every applicant for 
a patent or the reissue of a patent, any of the claims of which 



86 

have been twice rejected, and every party to an interference, 
may appeal from the decision of the primary examiner, or of the 
examiner in charge of interference, in such case, to the board of 
examiners-in-chie^', having once paid the fee for such appeal 
provided by law. 

Sec. 47. And be it further enacted, That if such party is dis- 
satisiied with the decision of the examiners-in-chief, he may, on 
payment of the duty required by law, appeal to the Commis- 
sioner in person. 

Sec. 48. And be it further enacted, That if such party, except 
a party in interference, is dissatisfied with the decision of the 
Commissioner, he may appeal to the Supreme Court of the Dis- 
trict of Columbia, sitting in banc. 

Sec. 49. And he it further enacted. That when an appeal is 
taken to the Supreme Court of the District of Columbia, the 
appellant shall give notice thereof to the Commissioner, and 
file in the Patent Otfice, within such time as the Commissioner 
shall appoint, his reasons of appeal, specifically set forth in 
writing. 

Sec. 50. And he it further enacted, That it shall be the duty 
of said court, on petition, to hear and determine such appeal, 
and to revise the decision appealed from in a summary way, on 
the evidence produced before the Commissioner, at such early 
and convenient time as the court may appoint, notifying the 
Commissioner of the time and place of hearing ; and the re- 
vision shall be confined to the points set forth in the reasons of 
appeal. And after hearing the case, the court shall return to 
the Commissioner a certificate of its proceedings and decision, 
which shall be entered of record in the Patent Office, and govern 
the further proceedings in the case. Eut no opinion or decision 
of the court in any such case shall preclude any person inter- 
ested from the right to contest the validity of such patent in 
any court wherein the same may be called in question. 

Sec. 51. And he it further enacted. That on receiving notice 
of the time and place of hearing such appeal, the Commissioner 
shall notify all parties who appear to be interested therein, in 
such manner as the court may prescribe. The party appealing 
shall lay before the court certified copies of all the original pa- 
pers and evidence in the case, and the Commissioner shall fur- 



87 

nish it with the grounds of his decision, fully set forth in writ- 
ing, touching all the points involved by the reasons of appeal. 
And at the request of any party interested, or of the court, the 
Commissioner and the examiners may be examined under oath, 
in explanation of the principles of the machine or other thing 
for which a patent is demanded. 

Sec. 52. Atid be it further enacted, That whenever a patent 
on application is refused, for any reason whatever, either by the 
Commissioner or by the Supreme Court of the District of Co- 
lumbia upon appeal from the Commissioner, the applicant may 
have remedy by bill in equity ; and the court having cognizance 
thereof, on notice to adverse parties and other due proceedings 
had, may adjudge that such applicant is entitled, according to 
law, to receive a patent for his invention, as specified in his 
claim, or for any part thereof, as the facts in the case may ap- 
pear. And such adjudication, if it be in favor of the right of 
the applicant, shall authorize the Commissioner to issue such 
patent, on the applicant filing in the Patent Ofiice a copy of the 
adjudication, and otherwise complying with the requisitions of 
law. And in all cases where there is no opposing party a copy 
of the bill shall be served on the Commissioner, and all the ex- 
penses of the proceeding shall be paid by the applicant, whether 
the final decision is in his favor or not. 

Sec. 53. And be it further enacted, That whenever any patent 
is inoperative or invalid, hy reason of a defective or insufiicient 
specification, or by reason of the patentee claiming as his own 
invention or discovery more than he had a right to claim as 
new, if the error has arisen by inadvertence, accident, or mis- 
take, and without any fraudulent or deceptive intention, the 
Commissioner shall, on the surrender of such patent, and the 
payment of the duty required by law, cause a new patent for 
the same invention, and in accordance with the corrected speci- 
fications, to be issued to the patentee, or, in the case of his 
death or assignment of the whole or any undivided part of the 
original patent, to his executors, administrators, or .assigns, for 
the unexpired part of the term of the original patent the sur- 
render of which shall take effect upon the issue of the amended 
patent ; and the Commissioner may, in his discretion, cause 
several patents to be issued for distinct and separate parts of the 
thing patented, upon demand of the applicant, and upon pay- 



ment of the required fee for a reissue for each of such reissued 
letters-patent. And the specification and claim in every such 
case shall be subject to revision and restriction, in the same 
manner as original applications are. And the patent so reissued, 
together with the corrected specification, shall have the eflTect 
and operation in law, on the trial of all actions for causes there- 
after arising, as though the same had been originally filed in 
such corrected form; but no new matter shall be introduced 
into the specification, nor in case of a machine patent shall the 
model or drawings be amended except each by the other, but 
when there is neither model nor drawing, amendments may be 
made upon proof satisfactory to the Commissioner that such 
new matter or amendment was a part of the original invention, 
and was omitted from the specification by inadvertence, acci- 
dent, or mistake, as aforesaid. 

Sec. 54. And be it further enacted, That whenever, through 
inadvertence, accident, or mistake, and without any fraudulent 
or deceptive intention a patentee has claimed more than that of 
which he was the original or first inventor or discoverer, bis 
patent shall be valid for all that part which is truly and justly 
his own, provided the same is a material or substantial part of 
the thing patented ; and any such patentee, his heirs or assigns, 
whether of the whole or any sectional interest therein, may, on 
payment of the duty required by law, make disclaimer of such 
parts of the thing patented as he shall not choose to claim or to 
hold by virtue of' the patent or assignment, stating therein the 
extent of his interest in such patent ; said disclaimer shall be 
in writing, attested by one or more witnesses, and recorded in 
the Patent Oflice, and it shall thereafter be considered as part 
of the original specification to the extent of the interest pos- 
sessed by the claimant and by those claiming under him after 
the record thereof. But no such disclaimer shall affect any 
action pending at the time of its being filed, except so far as 
may relate to the question of unreasonable neglect or delay in 
filing it. 

Sec. 55. And be it further enacted, That all actions, suits, 
controversies, and cases arising under the patent laws of the 
United States shall be originally'' cognizable, as well in equity 
as at law, by the Circuit Courts of the United States, or any 
District Court having the powers and jurisdiction of a Circuit 



89 

Court, or by the Supreme Court of the District of Columbia or 
of any Territory ; and the court shall have power, upon bill in 
equitj', filed by any party aggrieved, to grant injunctions ac- 
cording to the course and principles of courts of equity, to pre- 
vent the violation of any right secured by patent, on such terms 
as the court may deem reasonable ; and upon a decree being ren- 
dered in .any .such case for an infringement, the complainant 
shall be entitled to recover in addition to the profits to be ac- 
counted for by the defendant, the damages the complainant has 
sustained thereby, and the court shall assess the same, or cause 
the same to be assessed under its direction, and the court shall 
have the same powers to increase the same, in its discretion, 
that are given by said act to increase the damages found by ver- 
dicts in actions upon the case; but all actions shall be brought 
during the term for which the letters-patent shall be granted or 
extended, or within six years after the expiration thereof. 

Sec. 56. And be it further enacted, That a writ of error or ap- 
peal to the Supreme Court of the United States shall lie from 
all judgments and decrees of any Circuit Court, or of any Dis- 
trict Court exercising the jurisdiction of a Circuit Court, or of 
the Supreme Court of the District of Columbia, or of any Ter- 
ritory, in any action, suit, controversy, or case, at law or in 
equity, touching patent rights, in the same manner and under 
the same circumstances as in other judgments and decrees of 
such Circuit Courts, without regard to sum*or value in contro- 
versy. 

Sec. 57. And be it further enacted, That written or printed 
copies of any records, books, papers, or drawings, belonging to 
the Patent Office, and of letters-patent under the signature of 
the Commissioner, or acting commissioner, with the seal of 
office affixed, shall be competent evidence in all cases wherein 
the originals could be evidence, and any person making appli- 
cation therefor, and paying the fee required by law, shall have 
certified copies thereof. And copies of the specifications and 
drawings of foreign letters-patent, of record in the Patent 
Office, certified in like manner, shall he prima facie evidence of 
the fact of the granting of such foreign letters-patent, and of 
the date and contents thereof. 

Sec. 58. And be it further enacted, That whenever there shall 
be interfering patents, any person interested in any one of such 

12 



90 

interfering patents, or in the working of the invention claimed 
under either of such patents, may have relief against the inter- 
fering patentee and all parties interested under him by suit in 
equity against the owners of the interfering patent ; and the 
court having cognizance thereof, as hereinbefore provided, on 
notice to adverse parties, and other due proceedings had, accord- 
ing to the course of equity, may adjudge and declare either of 
the patents void in whole or in part, or inoperative, or invalid 
in any particular part of the United States, according to the in- 
terest of the parties in the patent or the invention patented. 
But no such judgment or adjudication shall affect the rights of 
any person, except the parties to the suit and those deriving 
title under them subsequent to the rendition of such judgment. 

Sec. 59. And he it further enacted, That damages for the in- 
fringement of any patent may be recovered by action on the 
case in any Circuit Court of the United States, or District 
Court exercising the jurisdiction of a Circuit Court, or in the 
Supreme Court of the District of Columbia, or of any Terri- 
tory, in the name of the party interested, either as patentee, as- 
signee, or grantee. And whenever in any such action a verdict 
shall be rendered for the plaintiif, the Court may enter judg- 
ment thereon for any sum above the amount found by the ver- 
dict as the actual damages sustained, according to the circum- 
stances of the case, not exceeding three times the amount of 
such verdict, together with the costs. 

Sec. 60. And he it further cnaci^ecZ, That whenever, through 
inadvertence, accident, or mistake, and without any wilful de- 
fault or intent to defraud or mislead the public, a patentee shall 
have, in his specification, claimed to be the original and first 
inventor or discoverer of any material or substantial part of the 
thing patented, of which he was not the original and first in- 
ventor or discoverer, as aforesaid, every such patentee, his ex- 
ecutors, administrators, and assigns, whether of the whole or 
any sectional interest in the patent, may maintain a suit at law 
or in equity, for the infringement of any part thereof, which 
was bona fide his own, provided it shall be a material and sub- 
stantial part of the thing patented, and be definitely distinguish- 
able from the parts so claimed, without right as aforesaid, not- 
withstanding the specifications may embrace more than that of 
which the patentee was the original or first inventor or dis- 



91 

coverer. But in every such case in which a judgment or decree 
shall be rendered for the plaintiff, no costs shall be recovered, 
unless the proper disclaimer has been entered at the Patent 
Office before the commencement of the suit , nor shall he be en- 
titled to the benefits of this section, if he shall have unreason- 
ably neglected or delayed to enter said disclaimer. 

Sec. 61. And he it further enacted, That in any action for in- 
fringement the defendant may plead the general issue, and 
having given notice in writing to the plaintiff or his attornej'^, 
thirty days before, may prove, on trial, any one or more of the 
following special matters : 

First. That for the purpose of deceiving the public the de- 
scription and specification filed by the patentee in the Patent 
Office was made to contain less than the whole truth relative to 
his invention or discovery, or more than is necessary to pro- 
duce the desired effect; or, 

Second. That he had surreptitiously or unjustly obtained the 
patent for that which was in fact invented by another, who 
was using reasonable diligence in adapting and perfecting the 
same ; or, 

Third. That it had been patented or described in some printed 
publication prior to his supposed invention or discovery thereof; 
or, 

Fourth. That he was not the original and first inventor or 
discoverer of any material and substantial part of the thing 
patented ; or, 

Fifth, That it had been in public use or on sale in this 
country, for more than two years before his application for a 
patent, or had been abandoned to the public. 

And in notices as to proof of previous invention, knowledge, 
or use of the thing patented, the defendant shall state the names 
of patentees and the dates of their patents, and when granted, 
and the names and residences of the persons alleged to have in- 
vented, or to have had the prior knowledge of the thing pat- 
ented, and where and by whom it had been used ; and if any 
one or more of the special matters alleged shall be found for 
the defendant, judgment shall be rendered for him, with costs. 
And the like defences may be pleaded in any suit in equity for 
relief against an alleged infringement; and proofs of the same 
may be given upon like notice in the answer of the defendant, 
and with the like effect. 



92 

Sect. 62. And be it further enacted, That whenever it shall 
appear that the patentee, at the time of making his application 
for the patent, believed himself to be the original and first in- 
ventor or discoverer of the thing patented, the same shall not 
be held to be void on account of the invention or discovery, or 
any part thereof, having been known or used in a foreign 
country, before his invention or discovery thereof, if it had not 
been patented, or described in a printed publication. 

Sec. 63. And be it further enacted, That where the patentee 
of any invention or discovery, the patent for which was granted 
prior to the second day of March, eighteen hundred and sixty- 
one, shall desire an extension of his patent beyond the original 
term of its limitation, he shall make application therefor, in 
writing, to the Commissioner, setting forth the reasons why 
such extension should be granted; and he shall also furnish a 
written statement under oath of the ascertained value of the in- 
vention or discovery, and of his receipts and expenditures on 
account thereof, sufficiently in detail to exhibit a true and faith- 
ful account of the loss and profit in any manner accruing to him 
by reuson of said invention or discovery. And said application 
shall be filed not more than six months nor less than ninety 
days before the expiration of the original term of the patent, 
and no extension shall be granted after the expiration of said 
original term. 

Sec. 64. And be it further enacted, That upon the receipt of 
such application, and the payment of the duty required by law, 
the Commissioner shall cause to be published in one newspaper 
in the city of Washington, and in such other papers published 
in the section of the country most interested adversely to the 
extension of the patent as he may deem proper, for at least 
sixty days prior to the day set for hearing the case, a notice of 
such application, and of the time and place when and where the 
same will be considered, that any person may appear and show 
cause why the extension should not be granted. 

Sec. 65. And be it further enacted, That on the publication of 
such notice, the Commissioner shall refer the case to the prin- 
cipal examiner having charge of the class of inventions to 
which it belongs, who shall make to said Commissioner a full 
report of the case, and particularly whether the invention or 
discovery was new and patentable when the original patent was 
granted. 



93 

Sec. 66. And be it farther enacted, That the Commissioner 
shall, at the time and place designated in the published notice, 
hear and decide upon the evidence produced, both for and 
against the extension ; and if it shall appear to his satisfaction 
that the patentee, without neglect or fault on his part, has 
failed to obtain from the use and sale of his invention or dis- 
covery a reasonable remuneration for the time, ingenuity, and 
expense bestowed upon it, and the introduction of it into use, 
and that it is just and proper, having due regard to the public 
interest, that the term of the patent should be extended, the 
said Commissioner shall make a certificate thereon, renewing 
and extending the said patent for the term of seven years from 
the expiration of the first term, which certificate shall be re- 
corded in the Patent Otfice, and thereupon the said patent shall 
have the same effect in law as though it had been originally 
granted for twenty-one years. 

Sec. 67. And he it further enacted, That the benefit of the ex- 
tension of a patent shall extend to the assignees and grantees of 
the right to use the thing patented to the extent of their in- 
terest therein. 

Sec. 68. And 5e it further enacted, That the following shall 
be the rates for patent fees : 

On filing each original application for a patent, fifteen dollars. 

On issuing each original patent, twenty dollars. 

On filing each caveat, ten dollars. 

On every application for the reissue of a patent, thirty dollars. 

On filing each disclaimer, ten dollars. 

On every application for the extension of a patent, fifty 
dollars. 

On the granting of every extension of a patent, fifty dollars. 

On an appeal for the first time from the primary examiners 
to the examiners-in-chief, ten dollars. 

On every appeal from the examiners-in-chief to the Com- 
missioner, twenty dollars. 

For certified copies of patents and other papers, ten cents per 
hundred words. 

Por recording every assignment, agreement, power of at- 
torney, or other paper, of three hundred words or under, one 
dollar; of over three hundred and under one thousand words, 
two dollars; of over one thousand words, three dollars. 

For copies of drawings, the reasonable cost of making them. 



94 

Sec. 69. And be it further enacted, That patent fees may be 
paid to the Commissioner, or to the Treasurer or any of the 
assistant treasurers of the United States, or to any of the 
designated depositaries, national banks, or receivers of public 
money, designated by the Secretary of the Treasury for that 
purpose, Avho shall give the depositor a receipt or certificate of 
deposit therefor. And all money received at the Patent OflBce, 
for any purpose, or from any source whatever, shall be paid 
into the treasury as received, -without any deduction whatever ; 
and all disbursements for said office shall be made by the dis- 
bursing clerk of the Interior Department. 

Sec. 70. And be it further enacted, That the Treasurer of the 
United States is authorized to pay back any sum or sums of 
money to any person who shall have paid the same into the 
treasury, or to any receiver or depositary, to the credit of the 
Treasurer, as for fees accruing at the Patent Office, through mis- 
take, certificate thereof being made to said Treasurer by the 
Commissioner of Patents. 



95 



Provisions of the Act of Jolt 8th, 1870, as to 
Designs. 

Sec. 71. And be it further enacted, That any person who, by 
his own industry, genius, efforts, and expense, has invented or 
produced any new and original design for a manufacture, bust, 
statue, alto-relievo, or bas-relief; any new and original design 
for the printing of woollen, silk, cotton, or other fabrics; any 
new and original impression, ornament, pattern, print, or pic- 
ture, to be printed, painted, cast, or otherwise placed on or 
worked into any article of manufacture ; or any new, useful, 
and original shape or configuration of any article of manufac- 
ture, the same not having been known or used by others before 
his invention or production thereof, or patented or described in 
any printed publication, may, upon payment of the duty re- 
quired by law, and other due proceedings had the same as in 
cases of invention or discoveries, obtain a patent therefor. 

Sec. 72. And be it further enacted, That the Commissioner 
may dispense with models of designs when the design can be 
sufficiently represented by drawings or photographs. 

Sec. 73. And be it ftirther enacted, That patents for designs 
may be granted for the term of three years and six months, or 
for seven years, or for fourteen years, as the applicant may in 
his application elect. 

Sec. 74. And be it further enacted, That patentees of designs 
issued prior to March two, eighteen hundred and sixty-one, shall 
be entitled to the extension of their respective patents for the 
term of seven years, in the same manner and under the same 
restrictions as are provided for the extension of patents for in- 
ventions or discoveries, issued prior to the second day of March, 
eighteen hundred and sixty-one. 

Sec. 75. And be it further enacted, That the following shall 
be the rates of fees in design cases : 

For three years and six months, ten dollars. 

For seven years, fifteen dollars. 

For fourteen years, thirty dollars. 

For all other cases in which fees arc required, the same rates 
as in cases of inventions or discoveries. 



J*^ f 



96 



Sec. 76. And be it further enacted, That all the regulations 
and provisions -which apply to the obtaining or protection of 
patents for inventions or discoveries, not inconsistent with the 
provisions of this act, shall apply to patents for designs. 



97 



Provisions op the Act of July 8th, 1870, as to 
Trade-Makks. 

Sec. 77. And be it further enacted, That any person or firm 
domiciled in the United States, and any corporation created by 
the authority of the United States, or of any State or Terri- 
tory thereof, and any person, firm, or corporation resident of 
or located in any foreign country which by treaty or conven- 
tion affords similar privileges to citizens of the United States, 
and who are entitled to the exclusive use of any lawful trade- 
mark, or who intend to adopt and use any trade-mark for ex- 
clusive use within the United States, may obtain protection for 
such lawful trade-mark by compljdng with the following re- 
quirements, to wit : 

First. By causing to be recorded in the Patent Office the 
names of the parties and their residences and place of business, 
who desire the protection of the trade-mark. 

Second. The class of merchandise and the particular descrip- 
tion of goods comprised in such class, by which the trade-mark 
has been or is intended to be appropriated. 

Third. A description of the trade-mark itself, with fac similes 
thereof, and the mode in which it has been or is intended to be 
applied and used. 

Fourth. The length of time, if any, during which the trade- 
mark has been used. 

Fifth. The payment of a fee of twenty-five dollars, in the same 
manner and for the same purpose as the fee required for patents. 

Sixth. The compliance with such regulations as may be pre- 
scribed by the Commissioner of Patents. 

Seventh. The filing of a declaration, under the oath of the 
person, or of some member of the firm or oflScer of the corpo- 
ration, to the effect that the party claiming protection for the 
trade-mark has a right to the use of the same, and that no other 
person, firm, or corporation has the right to such use, either in 
the identical form or having such near resemblance thereto as 
might be calculated to deceive, and that the description and fac 
similes presented for record are true copies of the trade-mark 
sought to be protected. 

Sec. 78. And be it further enacted, Thatsuch trade-mark shall 
remain in force for thirty years from the date of such registra- 

13 



98 

tion, except in cases where such trade-mark is claimed for and 
applied to articles not manufactured in this country and in 
which it receives protection under the laws of any foreign 
country for a shorter period, in which case it shall cease to have 
any force in this country by virtue of this act at the same time 
that it becomes of no effect elsewhere, and during the period 
that it remains in force it shall entitle the person, firm, or cor- 
poration registering the same to the exclusive use thereof so far 
as regards the dencription of goods to which it is appropriated 
in the statement filed under oath as aforesaid, and no other 
person shall lawfully use the same trade-mark, or substantially 
the same, or so nearly resembling it as to be calculated to de- 
ceive, upon substantially the same description of goods : Pro- 
vided, That six months prior to the expiration of said term of 
thirty years, application may be made for a renewal of such 
registration, under regulations to be prescribed by the Commis- 
sioner of Patents, and the fee for such renewal shall be the 
same as for the original registration ; certificate of such renewal 
shall be issued in the same manner as for the original registra- 
tion, and such trade-mark shall remain in force for a further 
term of thirty years : And provided further, That nothing in 
this section shall be construed by any court as abridging or in 
any manner affecting unfavorably the claim of any person, 
firm, corporation, or company to any trade-mark after the ex- 
piration of the term for which such trade-mark was registered. 
Sec. 79. And he it further enacted, That any person or cor- 
poration who shall reproduce, counterfeit, copy, or imitate any 
such recorded trade-mark, and afiix the same to goods of sub- 
stantially the same descriptive properties and qualities as those 
referred to in the registration, shall be liable to an action on 
the case for damages for such wrongful use of said trade-mark, 
at the suit of the owner thereof, in any court of competent ju- 
risdiction in the United States, and the party aggrieved shall 
also have his remedy according to the course of equity to enjoin 
the wrongful use of his trade-mark and to recover compensa- 
tion therefor in any court having jurisdiction over the person 
guilty of such wrongful use. The Commissioner of Patents shall 
not receive and record any proposed trade-mark which is not 
and cannot become a lawful trade-mark, or which is merely the 
name of a person, firm, or corporation only, unaccompanied by 
a mark sufiicient to distinguish it from the same name when 



99 

used by other persons, or which is identical Avith a trade-mark 
appropriate to the same class of merchandise and belonging to 
a different owner, and already registered or received for regis- 
tration, or which so nearly resembles such last-mentioned trade- 
mark as to be likely to deceive the public : Provided, That this 
section shall not prevent the registry of any lawful trade-mark 
rightfully used at the time of the passage of this act. 

Sec. 80. And be it further enacted, That the time of the re- 
ceipt of any trade-mark at the Patent Office for registration 
shall be noted and recorded, and copies of the trade-mark and 
of the date of the receipt thereof, and of the statement filed 
therewith, under the seal of the Patent Office, certified by the 
Commissioner, shall be evidence in any suit in which such 
trade-mark shall be brought in controversy. 

Sec. 81. And be it further enacted, That the Commissioner of 
Patents is authorized to make rules, regulations, and prescribe 
forms for the transfer of the right to the use of such trade- 
marks, conforming as nearly as practicable to the requirements 
of law respecting the transfer and transmission of copyrights. 

Sec. 82. And be it further enacted, That any person who shall 
procure the registry of any trade-mark, or of himself as the 
owner thereof, or an entry respecting a trade-mark in the Pat- 
ent Office under this act, by making any false or fraudulent 
representations or declarations, verbally or in writing, or by 
any fraudulent means, shall be liable to pay damages in conse- 
quence of any such registry or entry to the person injured 
thereby, to be recovered in an action on the case before any 
court of competent jurisdiction within the United States. 

Sec. 83. And be it further enacted. That nothing in this act 
shall prevent, lessen, impeach, or avoid any remedy at law or 
in equity, which any party aggrieved by any wrongful use of 
any trade-mark might have had if this act had not been passed. 

Sec. 84. And be it further enacted, That no action shall be 
maintained under the provisions of this act by anj'' person 
claiming the exclusive right to any trade-mark which is used 
or claimed in any unlawful business, or upon any article which 
is injurious in itself, or upon any trade-mark Avhich has been 
fraudulently obtained, or which has been formed and used with 
the design of deceiving the public in the purchase or use of any 
article of merchandise. 



100 

Provisions of the Act of July 8th, 1870, as to 
Copyrights. 

Sec. 85. And be it further enacted. That all records and other 
things relating to copyrights and required by law to be pre- 
served, shall be under the control of the Librarian of Congress, 
and kept and preserved in the Library of Congress ; and the 
Librarian of Congress shall have the immediate care and super- 
vision thereof, and, under the supervision of the Joint Com- 
mittee of Congress on the Library, shall perform all acts and 
duties required by law touching copyrights. The Librarian 
shall cause a seal to be provided for said otfice, with such device 
as the Joint Committee on the Library may approve, with which 
all records or papers issued from said office, and to be used in 
evidence, shall be authenticated. He shall also give an addi- 
tional bond, with sureties, to the Treasurer of the United StateS; 
in the sum of five thousand dollars, with the condition that he 
will render to the proper officers of the treasury a true account 
of all moneys received by virtue of his office. He shall also 
make an annual report to Congress of the number and descrip- 
tion of copyright publications for which entries have been made 
during the year. And the Librarian of Congress shall receive 
a yearly compensation of four thousand dollars, to commence 
when this act shall take effect. 

Sec. 86. And he it further enacted, That any citizen of the 
United States, or resident therein, who shall be the author, in- 
ventor, designer, or proprietor of any book, map, chart, dra- 
matic or musical composition, engraving, cut, print, or photo- 
graph or negative thereof, or of a painting, drawing, chromo, 
statue, statuary, and of models or designs intended to be per- 
fected as works of the fine arts, and his executors, administra- 
tors, or assigns, shall, upon complying with the provisions of 
this act, have the sole liberty of printing, reprinting, publish- 
ing, completing, copying, executing, finishing, and vending 
the same ; and in the case of a dramatic composition, of pub- 
licly performing or representing it, or causing it to be performed 
or represented by others ; and authors may reserve the right to 
dramatize or to translate their own works. 

Sec. 87. And he it further enacted, That copyrights shall be 



101 

granted for the term of twenty-eight years from the time of 
recording the title thereof, in the manner hereinafter directed. 

Sec. 88. A7id be itfurthei- enacted, That the author, inventor, 
or designer, if he he still living and a citizen of the United 
States or resident therein, or his widow or children, if he be 
dead, shall have the same exclusive right continued for the 
further term of fourteen years, upon recording the title of the 
work or description of the article so secured a second time, and 
complying with all other regulations in regard to original copy- 
rights, within six months before the expiration of the first term. 
And such person shall, within two months from the date of said 
renewal, cause a copy of the record thereof to be published in 
one or more newspapers, printed in the United States, for the 
space of four weeks. 

Sec. 89. And be it further enacted, That copyrights shall be 
assignable in law, by any instrument of writing, and such as- 
signment shall be recorded in the office of the Librarian of Con- 
gress within sixty days after its execution, in default of which 
it shall bo void as against any subsequent purchaser or mort- 
gagee for a valuable consideration, without notice. 

Sec. 90. And he it further enacted, That no person shall be 
entitled to a copyright unless he shall, before publication, de- 
posit in the mail a printed copy of the title of the book or other 
article, or a description of the painting, drawing, chromo, 
statue, statuary, or model or design for a work of the fine arts, 
for which he desires a copyright, addressed to the Librarian of 
Congress, and, within ten days from the publication thereof, 
deposit in the mail two copies of such copyright book or other 
article, or in case of a painting, drawing, statue, statuary, 
model or design for a work of the fine arts, a photograph of the 
same, to be addressed to said Librarian of Congress, as herein- 
after to be provided. 

Sec. 91. And he it further enacted, That the Librarian of Con- 
gress shall record the name of such copyright book or other 
article, forthwith in a book to be kept for that purpose, in the 
words following: " Library of Congress, to wit: Be it remem- 
bered that on the day of , Anno Domini , 

A. B., of , hath deposited in this office the title of a book 

(map. chart, or otherwise, as the case may be, or description of 



102 

the article), the title or description of which is in the following 
words, to wit: (here insert the title or description), the right 
whereof he claims as author, originator (or proprietor, as the 
case may he), in conformity with the laws of the United States 
respecting copyrights. C. D., Librarian of Congress." And 
he shall give a copy of the title or description, under the seal 
of the Librarian of Congress, to said proprietor, whenever he 
shall require it. 

Sec. 92. And be it further enacted, That for recording the title 
or description of any copyright book or other article, the Li- 
brarian of Congress shall receive, from the person claiming the 
same, fifty cents ; and for every copy under seal actually given 
to such person or his assigns, fifty cents ; and for recording any 
instrument of writing for the assignment of a copyright, fifteen 
cents for every one hundred words ; and for every, copy thereof, 
ten cents for every one hundred words, which moneys, so re- 
ceived, shall be paid into the Treasury of the United States. 

Sec. 93. And he it further enacted, That the proprietor of 
every copyright book or other article shall mail to the Librarian 
of Congress at Washington, within ten days after its publication, 
two complete printed copies thereof, of the best edition issued, 
or description or photograph of such article as hereinbefore re- 
quired, and a copy of every subsequent edition wherein any sub- 
stantial changes shall be made. 

Sec. 94. And he it further enacted, That in default of such de- 
posit in the post-oflace, said proprietor shall be liable to a penalty 
of twenty-five dollars, to be collected by the Librarian of Con- 
gress, in the name of the United States, in an action of debt in 
any District Court of the United States, within the jurisdiction 
of which the delinquent may reside or be found. 

Sec. 95. And he it further enacted. That any such copyright 
book or other article may be sent to the Librarian of Congress 
by mail, free of postage, provided the words " Copyright Mat- 
ter " are plainly written or printed on the outside of the package 
containing the same. 

Sec. 96. And he it further enacted, That the postmaster to 
whom such copyright book, title, or other article is delivered, 
shall, if requested, give a receipt therefor ; and when so deliv- 



103 

ered he shall mail it to its destination without cost to the pro- 
prietor. 

Sec. 97. And be it further enacted, That no person shall main- 
tain an action for the infringement of his copj'right unless he 
shall give notice thereof by inserting in the several copies of 
every edition published, on the title-page or the page immedi- 
ately following, if it be a book ; or if a map, chart, musical com- 
position, print, cut, engraving, photograph, painting, drawing, 
chromo, statue, statuary, or model or design intended to be per- 
fected and completed as a work of the fine arts, by inscribing 
upon some portion of the face or front thereof, of on the face of 
the substance on which the same shall be mounted, the follow- 
ing words, viz. : " Entered according to act of Congress, in the 

year , by A. B., in the office of the Librarian of Congress, 

at "Washington." 

Sec. 98. And he it further enacted, That if any person shall 
insert or impress such notice, or words of the same purport, in 
or upon any book, map, chart, musical composition, print, cut, 
engraving, or photograph, or other articles herein named, for 
which he has not obtained a copyright, every person so offend- 
ing shall forfeit and pay one hundred dollars ; one moiety thereof 
to the person who shall sue for the same, and the other to the 
use of the United States, to be recovered by action in any court 
of competent jurisdiction. 

Sec. 99. And be it further enacted, That if any person, after 
the recording of the title of any book as herein provided, shall 
within the term limited, and without the consent of the pro- 
prietor of the copyright first obtained in writing, signed in 
presence of two or more witnesses, print, publish, or import, or, 
knowing the same to be so printed, published, or imported, shall 
sell or expose to sale any copy of such book, such offender shall 
forfeit every copy thereof to said proprietor, and shall also for- 
feit and pay such damages as may be recovered in a civil action 
by such proprietor in any court of competent jurisdiction. 

Sec. 100. And be it further enacted, That if any person, after 
the recording of the title of any map, chart, musical composi- 
tion, print, cut, engraving, or photograph, or chromo, or of the 
description of anj?^ painting, drawing, statue, statuary, or model 
or design intended to be perfected and executed as a work of 



104 

the fine arts, as herein provided, shall, within the term limited, 
and without the consent of the proprietor of the copyright first 
obtained in writing, signed in presence of two or more witnesses, 
engrave, etch, work, copy, print, publish, or import, either in 
whole or in part, or by varying the main design with intent to 
evade the law, or, knowing the same to be so printed, published, 
or imported, shall sell or expose to sale any copy of such map 
or other article, as aforesaid, he shall forfeit to the said pro- 
prietor all the plates on which the same shall be copied, and 
every sheet thereof, either copied or printed, and shall further 
forfeit one dollar for every sheet of the same found in his pos- 
session, either printing, printed, copied, published, imported, 
Or exposed for sale ; and in case of a painting, statue, or statu- 
ary, he shall forfeit ten dollars for every copy of the same in 
his possession, or which have by him been sold or exposed for 
sale ; one moiety thereof to the proprietor, and the other to the 
use of the United States, to be recovered by action in any court 
of competent jurisdiction. 

Sec. 101. And be it further enacted, That any person publicly 
performing or representing any dramatic composition for which 
a copyright has been obtained, without the consent of the pro- 
prietor thereof, or his heirs or assigns, shall be liable for dam- 
ages therefor, to be recovered by action in any court of compe- 
tent jurisdiction ; said damages in all cases to be assessed at such 
sum, not less than one hundred dollars for the first, and fifty 
dollars for every subsequent performance, as to the court shall 
appear to be just. 

Sec. 102. And be it further enacted, That any person who shall 
print or publish any manuscript whatever, without the consent 
of the author or proprietor first obtained (if such author or pro- 
prietor be a citizen of the United States, or resident therein), 
shall be liable to said author or proprietor for all damages oc- 
casioned by such injury, to be recovered by action on the case 
in any court of competent jurisdiction. 

Sec. 103. And be it further etiacted. That nothing herein con- 
tained shall be construed to prohibit the printing, publishing, 
importation, or sale of any book, map, chart, dramatic or musi- 
cal composition, print, cut, engraving, or photograph, written, 
composed, or made by any person not a citizen of the United 
States, nor resident therein. 



105 

Sec. 104. A7id be it further enacted, That no action shall be 
maintained in any case of forfeiture or penalty under the copy- 
right laws, unless the same is commenced within two years after 
the cause of action has arisen. 

Sec. 105. And be it further enacted, That in all actions arising 
under the laws respecting copyrights the defendant may plead 
the general issue, and give the special matter in evidence. 

Sec. 106. And be it further enacted, That all actions, suits, 
controversies, and cases arising under the copyright laws of the 
United States shall be originally cognizable, as well in equity 
as at law, whether civil or penal in their nature, by the Circuit 
Courts of the United States, or any District Court having the 
jurisdiction of a Circuit Court, or in the Supreme Court of the 
District of Columbia, or any Territory. And the court shall 
have power, upon bill in equity, filed by any party aggrieved, 
to grant injunctions to prevent the violation of any right secured 
by said laws, according to the course and principles of courts of 
equity, on such terms as tl e court aiay deem reasonable. 

Sec. 107. And be it further enacted. That a writ of error or ap- 
peal to the Supreme Court of the United States shall lie from all 
judgments and decrees of any court, in any action, suit, contro- 
versy, or case touching copyrights , in the same manner and under 
the same circumstances as in other judgments and decrees of 
such courts, without regard to the sum or value in controversy. 

Sec. 108. And be it further enacted, That in all recoveries 
under the copyright laws, either for damages, forfeitures, or 
penalties, full costs shall be allowed thereon. 

Sec. 109. And be it further enacted, That all books, maps, 
charts, and other publications of every nature whatever, here- 
tofore deposited in the Department of the Interior, according 
to the laws regulating copyrights, together with all the records 
of said department, and all records concerning the same which 
were removed by the Department of the Interior from the De- 
partment of State, shall be removed to, and be under the con- 
trol of the Librarian of Congress, who is hereby charged with 
all the duties pertaining to copyrights required by law. 

Sec. 110. And be it further enacted. That the Clerk of each of 
the District Courts of the United States, shall transmit forthwith 

14 



106 

to the Librarian of Congress, all books, maps, prints, photo- 
graphs, music, and other publications of every nature what- 
ever, deposited in the said clerk's office, and not heretofore sent 
to the Department of the Interior, at "Washington, together 
with all records of copyright in his possession, including the 
titles so recorded, and the dates of record : Provided^ That where 
there are duplicate copies of legal, scientific, or mechanical 
works, one copy of each may be deposited in the library of the 
Patent Office, for which a receipt shall be given by the Com- 
missioner of Patents to the Librarian of Congress. 



107 



Eepealinq Clause and Schedule. 

Sec. 111. And he it further enacted, That the acts and parts of 
acts set forth in the schedule of acts cited, hereto annexed, are 
hereby repealed, without reviving any acts or parts of acts re- 
pealed by any of said acts, or by any clause or provisions therein : 
Provided, however, That the repeal hereby enacted shall not af- 
fect, impair, or take away any right existing under any of said 
laws; but all actions and causes of action, both in law and in 
equity, which have arisen under any of said laws, may be com- 
menced and prosecuted and if already commenced may be prose- 
cuted, to final judgment and execution, in the same manner as 
though this act had not been passed, excepting that the remedial 
provisions of this act shall be applicable to all suits and proceed- 
ings hereafter commenced ; And provided also. That all applica- 
tions for patents pending at the time of the passage of this act, 
in cases where the duty has been paid, shall be proceeded with 
and acted on in the same manner as though filed after the pas- 
sage thereof: And provided further , That all offences which aro 
defined and punishable under any of said acts, and all penalties 
and forfeitures created thereby, and incurred before this act 
takes effect, may be prosecuted, sued for, and recovered, and 
such offences punished according to the provisions of said acts, 
which are continued in force for such purpose. 



Schedule of statutes cited and repealed, as printed in the Statutes 
at Large, including such portions only of the appropriation 
bills referred to as are applicable to the Patent Office. 

Patents. 

Act of July 4th, 1836, chap. 357, vol. 5, p. 117. 
March 3d, 1837, chap. 45, vol. 5, p. 191. 
March 3d, 1839, chap. 88, vol. 5, p. 853. 
August 29th, 1842, chap. 263, vol. 5, p. 548. 
August 6th, 1846, chap. 90, vol. 9, p. 59. 
May 27th, 1848, chap. 47, vol. 9, p. 231. 
March 3d, 1849, chap. 1C8, vol. 9, p. 395. 
March 3d, 1851, chap. 32, vol. 9, p. 617. 



108 

Act of August 30th, 1852, chap. 107, yoI. 10, p. 75. 
August 31st, 1852, chap. 108, vol. 10, p. 76. 
March 3d, 1853, chap. 97, vol. 10, p. 209. 
April 22d, 1854, chap. 52, vol. 10, p. 276. 
March 3d, 1855, chap. 175, vol. 10, p. 643. 
August 18th, 1856, chap. 129, vol. 11, p. 81. 
March 3d, 1859, chap. 80, vol. 11, p. 410. 
February 18th, 1861, chap. 37, vol. 12, p. 130. 
March 2d, 1861, chap. 88, vol. 12, p. 246. 
March 3d, 1863, chap. 102, vol. 12, p. 796. 
June 25th, 1864, chap. 159, vol. 13, p. 194. 
March 3d, 1865, chap. 112, vol. 13, p. 533. 
June 27th, 1866, chap. 143, vol. 14, p. 76. 
March 29th, 1867, chap. 17, vol. 15, p. 10. 
July 20th, 1868, chap. 177, vol. 15, p. 119. 
July 23d, 1868, chap. 227, vol. 15, p. 168. 
March 3d, 1869, chap. 121, vol. 15, p. 293 

Copyrights. 

Act of February 15th, 1819, chap. 19, vol. 3, p. 481. 
February 3d, 1831, chap. 16, vol. 4, p. 436. 
June 30th, 1834, chap. 157, vol. 4, p. 728. 
August 18th, 1856, chap. 169, vol. 11, p. 138. 
February 5th, 1859, chap. 22, vol. 11, p. 380. 
February 18th, 1861, chap. 37, vol. 12, p. 130. 
March 3d, 1865, chap. 126, vol. 13, p. 540. 
February 18th, 1867, chap. 43, vol. 14, p. 395. 

Approved July 8th, 1870. 

Note. — The following is the text of the supplemental act re- 
lating to patents, approved March 3, 1871 : 

Be it enacted by the Senate and House of Representatives of the 
United States of America, in Congress assembled, That that part 
of section thirty-three of an act entitled " An act to revise, con- 
solidate, and amend the statutes relating to patents and copy- 
rights," approved July eight, eighteen hundred and seventy, 
which requires that, in case of application by assignee or as- 
signees for reissue of letters-patent, the application shall be made 
and the specification sworn to by the inventor or discoverer, if 
living, shall not be construed to apply to patents issued and as- 
signed prior to July eight, eighteen hundred and seventy. 

Approved, March 3, 1871. 



109 



INDEX 

TO PATENT, TKADE MAKE, AND COPYEIGHT 
LAWS. 



Abandonment, by incomplete application, for two years, 
Additional clerks, &c., .... 

Application, bow made, .... 

in case of forfeited patents, . 

rejected or withdrawn, .... 

to be completed in two years, 

made by inventor in case of assignment, 

by executor or administrator, 
Appeal to board of examiners-in-chief, 

to Commissioner, ..... 

to Supreme Court of District of Columbia, 

mode of proceeding, .... 

to Supreme Court of United States, 
Assignees, patents or reissues to, 
Assignments, ...... 

must be recorded within three months, 
Assistant Commissioner how appointed, 

salary, ...... 

to act in absence of Commissioner, 
Bill in equity, ..... 
Bond, Commissioner and chief clerk, . 
Caveat, who may file, .... 

certified copies of records to be evidence. 
Circuit Courts to take cognizance of cases under patent 
Clerks, .... 

Copyists, .... 
Commissioner, how appointed, 

salary, .... 

duties, 

to give bond, 

franking privilege, 

report to Congress, 

to make rules and regulations, 

to establish rules for taking testimony, 

appeal to, ..... . 

to make rules, &c., regulating transfer of trade-marks 



laws 



SEOTiorr 

32 

3 

26-30 

35 

35 

32 

33 

34 

46 

47 

48 

49, 50, 51 

56 

33 

36 

36 

2 

4 

11 

52 

6 

40 

57 

55 

2,4 

4 

2 

4 

7 

6 

8 

9 

19 

43 

47 

81 



110 



Copyright, .,.....••• 

Librarian of Congress to have charge of, . 

who may obtain, and for what, ..... 

duration, ......... 

extension, ......... 

assignment, ......... 

requisites for obtaining, ...... 

two copies to be sent to Librarian of Congress, . 

form of record and certificate, ..... 

fees for recording, &c., ...... 

copies of new editions to be sent, 

penalty for failure to deposit, ..... 

copyright matter free of postage, .... 

postmaster to give receipt, ...... 

form to be entered in or on copyright book, &c. , . 

penalty for wrongly announcing that copyright has 
been obtained, ........ 

remedy for infringement, ...... 

penalty for substantial infringement of maps, de 
signs, &c., . . -,.... 

performance of dramatic compositions, 

publishing manuscript without consent, 

not applicable to foreigners or non-residents, 

no action maintained unless within two years, 

plea 

Circuit Courts to take cognizance, .... 

appeal to Supreme Court, ...... 

costs in suits, ........ 

transfer to Librarian of Congress, .... 

clerks to send matter now in hand to Librarian of Con- 
gress, ......... 

repealing clause, ........ 

Designs, .......... 

when models may be dispensed with, .... 

duration, ......... 

extension, ... ...... 

fees, 

Disbursements made by disbursing clerk of Interior Depart- 
ment, .......... 

Disclaimer, ......... 

to be made before suit, ...... 

Drawings in applications, ....... 

Examination, .......•• 



SBCTIOIf 

85-110 
85 
86 
87 



90, 93 

91 
92 
93 



97 
98 



100 
101 
102 
103 
104 
105 
106 
107 
108 
109 

110 
111 
71-76 
72 
73 
74 
75 



64 
60 
27 
31 



Ill 



SECTION 

Examiner in charge of interferences, ..... 2 

salary, .......... 4 

duty, 42 

Examiners, principal, ........ 2 

salary, .......... 4 

first assistant, ........ 2, 4 

second assistant, ........ 2, 4 

Examiners-in-chief, how appointed, ..... 2 

salary, ......... 4 

duties, 10 

appeal to, ........ . 46 

Extension 63-67 

Fees, 68 

how paid, ......... 69 

Final fee — if not paid within six months, patent withheld, 23 

Foreign patent — effect on application in the United States, 25 

to give date to American patent, ..... 25 

Franking privilege, ........ 7 

Infringement, ... ..... 55 

damages for, ........ 59 

plea and special matters to be proved, .... 61 

Injunction, ......... 55 

Interferences, ......... 42 

Interfering applications, ....... 42 

Patents, 68 

Laborers and watchmen, ....... 4 

Librarian, .....,,... 2, 4 

Library, .......... 15 

Machinist, .......... 2, 4 

Messenger and purchasing clerk, ..... 2, 4 

Models to be arranged and open to inspection, ... 13 

in applications, ........ 29 

of rejected applications may be disposed of, . . 14 

of designs, ......... '72 

Money received paid into treasury, ..... 69 

to be paid back, ........ 70 

Oath by administrator or executor applying, ... 34 

of applicant, before whom to be taken, ... 30 

of office, ......... 5 

Officers' and employees' oath, ......' 5 

not to acquire interest in patents, .... 16 

Papers filed, when they may be printed, .... 18 



11:.^ 



Patent Office, ....... 

officers, 

agents not recognized for misconduct, . 
Patents, date of, . 

for what granted, ..... 

withheld if final fee is not paid within six months 

what must contain, ..... 

how to be signed and recorded, 

foreign, ....... 

forfeited application for renewal of, 
. "Patented'' to be marked on articles, 

erroneously marked, ..... 

Plea and special matters to be proved in suit for infringe 
ment, ........ 

Printing specifications, claims, decisions, &g., . 

of illegible papers, ..... 

Re-examination of a rejected case. 

Reissue, ........ 

Rejected and withdrawn applications, renewal of. 
Repealing clause, ...... 

Report to Congress, ...... 

Rules and regulations, ..... 

for taking testimony. Commissioner to establish. 
Salaries, ........ 

Seal, ......... 



Specimens in applications, ..... 

Subpoena issued by clerks of United States courts. 
Sup. Ct. of Dist. of Col. , appeal to and mode of proceeding. 
Supreme Court of United States, writ of error or appeal to 
Trade-marks, ........ 

who may obtain protection for, and how, 
duration, extent of protection, and extension, 
remedy for infringement, ..... 

not a name alone, ...... 

what may be refused, ...... 

certified copy of mark and record to be evidence. 
Commissioner to make rules and regulate transfer, 
fraud in procuring registry, .... 

act not to affect existing remedy, 

no action to be maintained for fraudulent or improper 
Use in a foreign country if not patented or published, 

of patentable article before patent. 
Witnesses in eases pending in Patent Office, 



SECTION 
1 

2 
17 
23 
24 
23 
22 
21 
25 
35 
38 
39 

61 

20 

18 

41 

53 

35 

111 

9 

19 

43 

4 

12 

28 

44 

48-51 
56 

77-84 
77 
78 
79 
79 
79 
80 
81 
82 
83 
84 
62 
37 
45 













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